UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. SAMSUNG ELECTRONICS CO., LTD.; Petitioner

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1 Paper No. Filed: Sepetember 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS CO., LTD.; Petitioner v. SCRIPT SECURITY SOLUTIONS, LLC Patent Owner PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,542,078

2 TABLE OF CONTENTS Petition for Inter Partes Review I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R III. PAYMENT OF FEES UNDER 37 C.F.R (a)... 3 IV. GROUNDS FOR STANDING... 3 V. PRECISE RELIEF REQUESTED AND GROUNDS RAISED... 4 A. Claims for Which Review is Requested... 4 B. Statutory Grounds of Challenge... 4 VI. LEVEL OF ORDINARY SKILL IN THE ART... 5 VII. THE 078 PATENT... 5 A. The Alleged Invention of the 078 Patent... 5 B. Acknowledged Conventional Security Technologies... 8 C. Prosecution History of the 078 Patent... 9 D. The Challenged Claims Are Not Entitled to a Priority Date Before February 16, Claim Claims Claims VIII. CLAIM CONSTRUCTION...14 IX. DETAILED EXPLANATION OF GROUNDS...17 A. Ground 1: Glidewell Renders Obvious Claim Claim B. Ground 2: Glidewell and Lai Render Obvious Claim 1-6 and i

3 1. Claim Claim Claim Claim Claim Claim Claim C. Ground 3: Glidewell, Lai, and Wadhwani Render Obvious Claims 7, 8 and Claim Claim Claim X. ALL PROPOSED GROUNDS SHOULD BE ADOPTED...60 XI. CONCLUSION...61 ii

4 LIST OF EXHIBITS Petition for Inter Partes Review Ex U.S. to Script et al., issued April 1, 2003 Ex Ex Declaration of David H. Williams RESERVED Ex File History of U.S. Application No. 09/785,702 Ex File History of U.S. Application No. 09/271,511 Ex File History of U.S. Application No. 08/865,886 Ex U.S. Provisional Application No. 60/018,829 Ex U.S. Patent No. 5,319,698 to Glidewell et al., issued June 7, 1994 Ex Ex Ex Ex Ex RESERVED RESERVED RESERVED RESERVED RESERVED Ex U.S. Patent No. 6,970,183 to Monroe, issued November 29, 2005 Ex U.S. Patent No. 6,009,356 to Monroe, issued December 28, 1999 Ex U.S. Patent No. 5,610,580 to Lai, issued March 11, 1997 Ex U.S. Patent No. 3,925,763 to Wadhwani et al., issued December 9, 1975 Ex AMERICAN HERITAGE DICTIONARY 1181 (4 th ed. 2000) Ex Script Security Solutions, LLC s Opening Claim Construction Brief in Script Security Solutions L.L.C. v. Amazon.com, Inc. et al., Case No. 2:15-cv (E.D. Tex.) iii

5 Ex Ex Ex Ex Ex Ex Claim Construction Memorandum Opinion and Order in Script Security Solutions L.L.C. v. Amazon.com, Inc. et al., Case No. 2:15- cv (E.D. Tex.) Exhibit 4 to Script Security Solutions, LLC s Opening Claim Construction Brief in Script Security Solutions L.L.C. v. Amazon.com, Inc. et al., Case No. 2:15-cv (E.D. Tex.) Andree Brooks, TALKING: Security; Systems Getting Smarter, The New York Times, February 5, 1989, Griffin Miller, Putting Out Unwelcome Mat for Burglars, The New York Times, December 10, 1992, Rich Warren, Do It Yourself To Cut Alarming Cost of Security, Chicago Tribune, May 8, 1987, 08/entertainment/ _1_schlage-adt-sensors N.R. Kleinfield, This Long Island Industry Is Beating the Recession; Demand Remains Strong for Alarms and Security Systems to Keep Burglars Away, April 8, 1992, iv

6 I. INTRODUCTION Samsung Electronics Co., Ltd. ( Petitioner ) requests inter partes review ( IPR ) of claims 1-10 of U.S. ( the 078 patent ) (Ex. 1001), which is allegedly assigned to Script Security Solutions, LLC ( Patent Owner ). The 078 patent generally relates to security systems, and in particular to a system that detects and signals the movement of an object. Ex. 1001, Abstract. While the 078 patent alleges the need for a motion detection and signal generating system that is small in size, transportable, easy to install and can sense motion relative to any desired initial position of an object (Ex. 1001, 2:14-17), none of the challenged claims recite anything new relating to these features. The one need that may relate to the claims, specifically the need to provide information about detected motion to a remote location, such as a remote server or device for law enforcement or other security agency (id., 2:17-20), was already known and disclosed in the prior art. See, e.g., Ex. 1008, 5:42-67; Ex. 1014, Abstract, 1:20-24, 3:40-5:35, 47:20-48:32; Ex. 1015, Figs. 1-9, Abstract, 6:48-7:7. It is thus no surprise that the alleged invention is nothing more than a compilation of known technologies and devices that are integrated to perform the very features those devices were designed to do. Devices such as sensors affixed to a door or window that detect movement, a wireless receiver that receives sensor 1

7 signals, an information gathering device that gathers the information relating to the movement from the receiver, and a remote notification device for sending the movement information to a remote host, were all known. Ex. 1001, Abstract, Figs. 1, 12, 12: Indeed, technologies like the BLACK WIDOW receiver, XCam2 TM video camera kit, and the XRay Vision Internet Kit TM, are all prior art devices that the 078 patent admits can be used for implementing features recited in the challenged claims. Id., 8:57-61, 5:36-45, 9:25-29, 10:57-11:1, 11: Arranging known devices and technologies to signal object movement to a remote location as described and claimed in the 078 patent was no leap forward in the art. Thus, for the reasons explained below, claims 1-10 of the 078 patent should be found unpatentable and canceled. II. MANDATORY NOTICES UNDER 37 C.F.R Real Parties-in-Interest: Petitioner identifies Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and SmartThings, Inc. as the real partiesin-interest. Related Matters: Patent Owner has asserted the 078 patent in the following litigations filed in the Eastern District of Texas: 2:15-cv-00368; 2:15-cv-00369; 2:15-cv-00370; 2:15-cv-00371; 2:15-cv-00372; 2:15-cv-00373; 2:15-cv-00374; 2:15-cv-00375; 2:15-cv-00376; 2:15-cv-00377; 2:15-cv-00378; 2:15-cv-01030; 2:15-cv-01031; 2:15-cv-01032; 2:15-cv-01033; 2:15-cv-01034; and 2:15-cv- 2

8 Patent Owner has also asserted related U.S. Patent Nos. 6,828,909 ( the 909 patent ) and 7,113,091 in one or more of these actions. Petitioner is concurrently filing a second petition on the 078 patent. Petitioner is also concurrently filing IPR petitions on the 909 patent. The 078 patent was also challenged in IPR Counsel and Service Information: Lead counsel is Naveen Modi (Reg. No. 46,224), and back-up counsel are Joseph E. Palys (Reg. No. 46,508) and Phillip W. Citroën (Reg. No. 66,541). Service information is: Paul Hastings LLP, th St. N.W., Washington D.C., 20005, Tel: , Fax , PH-Samsung-Script-IPR@paulhastings.com. Petitioner consents to electronic service. III. PAYMENT OF FEES UNDER 37 C.F.R (a) The PTO is authorized to charge all fees due at any time during this proceeding, including filing fees, to Deposit Account No IV. GROUNDS FOR STANDING Petitioner certifies that the 078 patent is available for IPR and Petitioner is not barred or estopped from requesting IPR on the grounds identified herein. 3

9 V. PRECISE RELIEF REQUESTED AND GROUNDS RAISED A. Claims for Which Review is Requested Petitioner respectfully requests review of claims 1-10 of the 078 patent ( challenged claims ), and cancellation of these claims as unpatentable, in view of the grounds listed below. B. Statutory Grounds of Challenge The challenged claims should be cancelled as unpatentable based on the following grounds: Ground 1: Claim 1 is obvious under 35 U.S.C. 103(a) in view of U.S. Patent No. 5,319,698 ( Glidewell ) (Ex. 1008); Ground 2: Claims 1-6 and 10 are obvious under 103(a) in view of Glidewell and U.S. Patent No. 5,610,580 ( Lai ) (Ex. 1016); Ground 3: Claims 7, 8 and 9 are obvious under 103(a) in view of Glidewell, Lai, and U.S. Patent No. 3,925,763 ( Wadhwani ) (Ex. 1017). While the 078 patent claims a priority date of May 30, 1996, the challenged claims are not entitled to a priority date earlier than February 16, Infra, Part VII.D. Glidewell was filed on February 11, 1992, and issued on June 7, Lai was filed on August 4, 1995, and issued on March 11, Wadhwani was filed on September 13, 1973, and issued on December 9, Therefore, Glidewell, Lai, and Wadhwani are prior art at least under 35 U.S.C. 102(b). Even if the 078 patent is entitled to a priority date of May 30, 1996, Glidewell and Wadhwani 4

10 would be prior art under 102(b), and Lai would be prior art under 35 U.S.C. 102(e). VI. LEVEL OF ORDINARY SKILL IN THE ART A person of ordinary skill in the art at the time of the alleged invention of the 078 patent would have had at least a B.S. degree in computer science, electrical engineering, or equivalent thereof, and at least two years of experience in the relevant field, e.g., networking or security. Ex. 1002, VII. THE 078 PATENT A. The Alleged Invention of the 078 Patent The 078 patent discloses an alarm system which can detect the movement of an object (e.g., door, window). Ex. 1001, Fig. 1, 4:34-49, 2: Petitioner submits herewith the declaration of David Williams (Ex. 1002, see also id., 1-21), an expert in the field of the 078 patent. 5

11 The system includes multiple movement detecting and signal transmitting means 20, a receiver 30, and a remote control 40. Id., 4: Detectors 20 each attach to a moveable object (e.g., door, window). Id., 4: When the object moves, a wire 22 in detector 20 is displaced, causing a transmitter in detector 20 to send a wireless signal. The receiver 30 detects the wireless signal and initiates an alarm. Id., 4:60-64, 5:14-19; see also Ex. 1002, The 078 patent describes an enhanced version of the alarm system in connection with Fig

12 In addition to the detector 20 and receiver 30 described above, the enhanced version includes an information gathering device 90, a remote notification device 92, and a remote host 96. Ex. 1001, 10: When the monitored object moves, the information gathering device 90 receives a signal sent by detector 20. Id., 10:31-34, 12: The information gathering device 90 may include a camera that acquires image information. Id., 12: An RF transmitter in the information gathering device 90 then sends information related to the detected motion to remote notification device 92. Id., 12: The remote 7

13 notification device then forwards that information to a remote network computer host 96. Id., 12:39-52; see also Ex. 1002, B. Acknowledged Conventional Security Technologies The 078 patent acknowledges that technologies like those discussed above were known before the alleged invention. For example, the patent acknowledges that the BLACK WIDOW was commercially available and may be purchased off-the-shelf from various electronics supply companies. Ex. 1001, 5: The 078 patent explains that the BLACK WIDOW receiver unit was used as a receiver (e.g., receiver 30). Id. The 078 patent also acknowledges that the disclosed RF receiver 106 portion of the disclosed information gathering device 90 (id., 10:31-35) can be implemented using the same RF receiving circuit. Id., 10:66-11:1; Ex. 1002, 31. Patent Owner s expert in a related litigation in the Eastern District of Texas (No. 2:15-cv-01030) (hereinafter, EDTX Case ) acknowledged the same. Ex. 1021, 38. The 078 patent further acknowledges that a number of commercially available surveillance products that can be used to implement the power supply 100, camera 102, and RF transmitter 104 components of the information gathering device 90. Ex. 1001, 10:31-35, 10: Specifically, the 078 patent identifies the XCam2 TM video camera kit that was available at the Internet website. Id., 10: The patent acknowledges that this 8

14 camera was a single device of relative small size that included a video camera and microphone and could wirelessly transmit video and audio signals. Id., 10:57-65; Ex. 1002, 32. Patent Owner s expert in the EDTX Case also acknowledged its prior existence. Ex. 1021, 17 ( 38). The 078 patent also acknowledges that the XRay Vision Internet Kit TM [was] available at the aforementioned Internet website before the alleged invention. Ex. 1001, 11: The patent explains that this prior art technology can be used to implement the remote notification device 92A. Id., As disclosed, the XRay vision technology included an RF receiver to capture and manage images received from the XCam2 camera described above, and included software to forward the images to a remote network host in real-time or via . Id., 11:33-39; Ex. 1002, 33. C. Prosecution History of the 078 Patent During prosecution of U.S. Application No. 09/785,702, which resulted in the 078 patent, the examiner stated that Glidewell disclose[s] a system for detecting movement of an object, such as a door or window..., and providing a local wireless transmitter and receiver, and wired transmitter/receiver means for communicating the detected conditions to a remote point, but that it allegedly fail[s] to teach that the wireless local receiver... also includes an information gathering device (such as a video camera) for recording and sending such 9

15 information to a remote host. 2 Ex.1004, 3. The examiner, however, did not consider Glidewell in the manner discussed below. See Part IX. D. The Challenged Claims Are Not Entitled to a Priority Date Before February 16, 2001 A patent s date of invention is presumed to be its filing date. Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986). A patentee obtains the benefit of an earlier priority date only by demonstrat[ing] that the claims meet the requirements of 35 U.S.C In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). On its face, the 078 patent claims priority to a continuation-in-part application no. 09/271,511 filed on March 18, 1999; a continuation-in-part application no. 08/865,886 filed on May 30, 1997; and a provisional application no. 60/018,829 filed on May 30, The challenged claims of the 078 patent are not entitled to the benefit of any of these earlier application dates. The 511 application does not disclose the enhanced version of the alarm system described in columns and Figs of the 078 patent. In particular, the 511 application does not include the information gathering device or the remote notification device recited in claim 1, the camera of claim 2 (and its dependent claims), the memory features of claim 3, the network interface 2 As explained below, Petitioner disagrees that claim 1 requires a camera or sending video data. See Part VIII, IX.A.1. 10

16 limitations of claims 6-9, the local computer limitations of claims 8 and 9, and the image and/or audio information of claim Ex. 1002, 35, 36, 39, 40, 43, 44. These features were not disclosed until the February 16, 2001 application. The challenged claims, therefore, are entitled only to the February 16, 2001 filing date. 1. Claim 1 Independent claim 1 includes two limitations not disclosed in the 511 application. First, claim 1 recites an information gathering device adapted to receive said predetermined signal, to gather information relating to said movement, and to transmit said information. The 078 patent s alleged supporting disclosure for the information gathering device is at column 10, lines 13-65, column 12, lines 24-38, and Figures 12, 13, and 15. The 511 application contains none of these disclosures. Rather, the 511 application only describes a local alarm system with 3 The other applications cited on the face of the 078 patent also do not contain the disclosures. Ex. 1002, 34-46; Exhs. 1006, 4-21, Ex. 1007, The analysis in this section will focus on the 511 application because if this application does not satisfy 112, the 078 patent cannot claim the benefit of the 886 or 829 applications. See In re NTP, 654 F.3d at The 702 application does not incorporate by reference any of the other applications. 11

17 movement detecting means 20, receiver means 30, and remote control unit 40. See Ex. 1005, 10-11, 14-19, 28-32; Ex. 1002, 35, Second, claim 1 recites a remote notification device... to establish data communication with a remote host, and to provide data communication with a remote host. The 078 patent describes these features at column 11, line 6 through column 12, line 23; column 12, lines 38-65; and Figures 12, 14, and 15. The 511 application, again, contains none of these disclosures. 5 Ex. 1005, 10-11, 14-19, 28-32; Ex. 1002, 35, Receiver means 30 is not the claimed information gathering device. In Fig. 12, receiver means 30 and information gathering device 90 are disclosed as separate and distinct devices. Also, receiver means 30 only performs one of the three claimed functions of the information gathering device it is adapted to receive said predetermined signal, but not to gather information relating to said movement or to transmit said information. Ex. 1002, The remote control unit 40 is not the same as the remote host or remote notification device of claim 1. The remote control unit 40 merely allows a user to turn the receiver 30 on or off, much like a television remote control, or to depress a panic button that instantly activates the alarm function of receiver 30. Ex. 1005, Ex. 1002,

18 The 511 application, therefore, does not demonstrate possession of all limitations of claim 1 to one of skill in the art (Ex. 1002, 35, 36), and claim 1 and dependent claims 2-10 are therefore only entitled to the February 16, 2001 priority date. 2. Claims 2-10 Claims 2-9 additionally require a camera (claim 2), claim 3 requires that the camera is digital with a memory for storing digital images, and claim 10 requires that the information includes image and/or audio information. The 078 patent s disclosure of a camera that has a memory or use of image and/or audio information is provided at column 10, lines 31-65; column 12, lines 31-38; and Figures 13 and 15. The 511 application contains none of these disclosures, nor does it contain any suggestion that cameras or image and/or audio information are to be used with the disclosed alarm system. See Ex. 1005, 10-11, 14-19, 28-32; Ex. 1002, Therefore, in addition to the reasons given above, the 511 application does not demonstrate possession of all limitations of claims 2-10 to one of skill in the art (Ex. 1002, 40), and thus claims 2-10 are only entitled to the February 16, 2001 priority date. 3. Claims 6-9 Claims 6-9 additionally require that the remote notification device comprise a network interface (claim 6) and additionally comprises an analog modem, a 13

19 digital modem, or a network interface card (claim 7). Claims 8 and 9 require that the remote notification device communicate with a local computer (claim 8) that further comprises a network interface for communicating the information to a remote host (claim 9). The 078 patent s disclosure relating to these features is provided at column 10, lines 31-65; column 12, lines 31-38; and Figure 14A. The 511 application contains none of these disclosures. See Ex. 1005, 10-11, 14-19, 28-32; Ex. 1002, 43, 44. Therefore, in addition to the reasons given above, the 511 application does not demonstrate possession of all limitations of claims 6-9 to one of skill in the art (Ex. 1002, 44), and thus claims 6-9 are only entitled to the February 16, 2001 priority date. VIII. CLAIM CONSTRUCTION Based on the May 30, 1997 filing date of the earliest non-provisional patent application upon which the 078 patent is based and the patent term adjustment of 101 days, as represented on the face of the 078 patent, the 078 patent will expire by September 8, Therefore, the 078 patent will expire within 18 months 6 In IPR , Patent Owner certified that the 078 patent will expire on September 8, 2017, and requested that the Board apply a district court-type claim construction. See ADT LLC v. Script Security Solutions LLC, IPR , 14

20 from the entry of the notice of filing date issued in this proceeding. See 37 C.F.R (b) (Apr. 1, 2016). When a patent expires during an inter partes review, the Board has applied the principles set forth by the [Federal Circuit] in Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). Square, Inc. v. J. Carl Cooper, IPR , Paper 17 at 2 (June 23, 2014). Given the Board only construes the claims when necessary to resolve the underlying controversy (Toyota Motor Corp. v. Cellport Systems, Inc., IPR , Paper No. 11 at 16 (August 14, 2015)), for purposes of this proceeding, the Board need not give any special meaning to the terms of the challenged claims, and instead may apply their plain and ordinary meaning, where applicable. Petitioner demonstrates below how the prior art discloses the claim limitations under their plain and ordinary meaning, where applicable. See also Ex. 1002, Petitioner also demonstrates below how the prior art discloses the claim limitations under Patent Owner s proposed constructions and the District Court s adopted constructions in the EDTX Case. The table below summarizes Patent Owner s proposed interpretations (Ex. 1019) and the District Court s adopted constructions (Ex. 1020). Paper 9 at 2-3 (May 2, 2016). The Board granted Patent Owner s request. See ADT, IPR , Paper 10 at 2 (May 12, 2016). 15

21 Claim Term detector adapted to detect movement of said object and provide an indication of said movement (claim 1) information gathering device adapted to receive said predetermined signal, to gather information relating to said movement, and to transmit said information (claim 1) remote notification device adapted to receive said information from said information gathering device, to establish data communication with a remote host, and to provide said information to said remote host (claim 1) remote host (claims 1, 9) / remote network Patent Owner s Construction No construction necessary (Ex. 1019, 7) Subject to 112(6) Function: to receive said predetermined signal, to gather information relating to said movement, and to transmit said information Structure: an RF receiver, a camera and/or microphone, RF transmitter, and a power supply (Ex. 1019, 13-15) Subject to 112(6) Function: to receive said information from said information gathering device, to establish data communication with a remote host, and to provide said information to said remote host Structure: a power supply, receiver, memory, and network interface (Ex. 1019, 3) a server at a remote location District Court s Construction No construction necessary (Ex. 1020, 3) device consisting of an RF receiver, an RF transmitter, and a power supply, and which may also include a camera and/or a microphone, which performs the function of receiving the predetermined signal, gather information relating to the detected movement, and transmitting that information (Ex. 1020, 9-10) Same (Ex. 1020, 3 (explaining Patent Owner agreed to the same construction)) Same (Ex. 1020, 3) 16

22 Patent Owner s Claim Term Construction host (claim 6) (Ex. 1019, 6) local computer (claim a computer that resides 8) near the location from which information is retrieved (Ex. 1019, 20-21) District Court s Construction computer that resides near the remote notification device (Ex. 1020, 10-11) IX. DETAILED EXPLANATION OF GROUNDS As explained below, the challenged claims describe nothing more than features that were well-known at the time of the alleged invention (see generally Ex. 1002, 31-33, (citing Exhs. 1008, 1014, ), 62-84) and are unpatentable based on the following grounds and prior art. A. Ground 1: Glidewell Renders Obvious Claim 1 1. Claim 1 a) [1pre] A system for detecting the movement of an object and providing information relative to said movement to a remote location comprising To the extent the preamble is limiting, Glidewell discloses these features of claim 1. For example, as shown in Figures 1 and 2 below, Glidewell describes a security system for detecting and signaling the presence of abnormal security or hazardous conditions. Ex. 1008, Abstract. The system uses sensor means 16 structured to detect movement of an object. Id., Abstract, 1:5-11, 1:49-55, 2:10-15, 3:17-32, 4:2-9, 5:7-19, 5:42-43, 6:54-7:1, 9:25-39, 9:43-54, Figs. 1, 2. For 17

23 example, sensor means 16 may be activated by the opening of windows or doors. Id., 3:22-32, 4:4-7, 8:51-53, 9:32-34; Ex. 1002, 62-65, Id., Fig. 1; Ex. 1002, 63, 87. Glidewell s system provides information relative to the detected movement to a remote location. For example, when a sensor means detects the movement of an object (e.g., door, window), the sensor wirelessly transmits a twelve bit coded signal to receiver means 18, which performs a check of the received signal, gathers the four bits of data that identifies the sensor means 16 from the signal, and transmits the four bits of data to the slave transmitter 20. Id., 1:49-2:9, 3:32-42, 3:48-60, 4:39-43, 4:43-45, 4:51-5:1, 7:1-31, 9:62-10:34; Ex. 1002, 65,

24 Glidewell s system 10 includes a receiver 18 that causes the four bit sensor code to appear on a display 42, which also provides information relative to the movement. Ex. 1008, 4:63-66; Ex. 1002, 65, 87. The slave transmitter 20 also provides information relative to the movement by adding to the four bit sensor identification code, twelve digital bits, which designates the particular individual unit 14 where the system 12 has triggered, is located and wirelessly transmits the sixteen bit coded signal to security station 54. Ex. 1008, 2:2-9, 5:17-19, 7:31-43, 10:25-36; Ex. 1002, 66, 88. Id., Fig. 2; Ex. 1002, 63, 88. Security station 54 includes a master control unit 60 that, for example, calls telephone numbers in response to the sixteen bit coded signal transmitted by the slave transmitter 20, thus also providing information relative to the movement. Ex. 1008, 5:42-60, 6:2-17; Ex. 1002, 67-71,

25 Id., Fig. 3; Ex. 1002, 89. See also analysis and citations below for the remaining limitations of this claim. b) [1a] an object whose movement is to be detected, As explained above for claim element 1pre, Glidewell discloses that movement of an object, such as the opening of doors, windows, and the removal of structure, can be detected using sensor means 16. Ex. 1008, 3:17-32, 4:5-7, 8:51-53, 9:32-34; Ex. 1002, 64, 93. c) [1b] a detector adapted to detect movement of said object and provide an indication of said movement, Glidewell explains that the movement of an object (e.g., door, window) is detected by sensor means 16, which includes a detector 22. Ex. 1008, Abstract, 1:49-55, 2:10-15, 3:17-30, 6:62-7:1, 9: Glidewell explains that well known type of detectors can be used, such as magnetic switches. Id., 3:29-32, 8:38-40, 9:19-21; Ex. 1002, 64, 94. As explained above for claim element 1pre, sensor 16 20

26 with detector 22 detects abnormal conditions, and thus sensor means 16 and/or detector 22 within sensing means 16 is a detector adapted to detect movement of an object. Ex. 1008, 3:22-29, 4:51-54, 8:49-53, 8:57, 9:31-38; Ex. 1002, 64, 94-97; Part IX.A.1.a. Ex. 1002, 96 (Demonstrative A). Upon detection of movement by detector 22, Glidewell explains that the sensor means 16 wirelessly transmits a signal via transmitter 26 that includes the four bit sensor identification and eight bit code to identify the individual unit 14. Ex. 1008, 3:30-47, 4:49-5:1, see also, e.g., id., 1:49-2:9, 3:48-60, 3:30-47, 4:49-5:1. Therefore, detector 22 within sensor means 16 provides an indication of 21

27 movement to trigger the transmission of the code information. Detector 22 necessarily provides such an indication because without such a signal of movement from detector 22, sensing means 16 would not detect movement or transmit the code information, as disclosed by Glidewell. See, e.g., Ex. 1008, 3:22-32; Ex. 1002, For similar reasons, sensor means 16, which includes detector 22, also provides an indication of movement. Ex. 1002, d) [1c] a first transmitter associated with said detector and adapted to wirelessly transmit a predetermined signal in response to said indication Glidewell explains that each sensor means 16, which includes detector 22, includes a transmitter 26 and antenna 28. Ex. 1008, Abstract, 1:55-58, 2:14-19, 3:20-22, 7:8-11, Fig. 1. The transmitter 26 and/or antenna 28 is a first transmitter that is associated with the sensor means 16 and/or detector 22 because transmitter 26, antenna 28, and detector 22 are part of the same sensor means 16, and because the transmitter 26 wirelessly transmits a signal in response to detector 22 detecting movement of an object. Ex. 1008, 3:43-47, 4:53-54, 10:4-7; discussion above for claim elements 1pre-1b; Ex.1002, Additionally, Glidewell discloses that transmitter 26 and/or antenna 28 is adapted to wirelessly transmit a predetermined signal in response to said indication of movement of an object. For example, when detector 22 is triggered, indicating movement of an object, transmitter 26 wirelessly transmits the above-described 22

28 twelve bit signal to receiver means 18. Ex. 1008, Abstract, 1:55-58, 2:15-20, 4:51-54, 7:1-11, 9:62-10:7; Ex.1002, The signal sent by transmitter 26 is predetermined because, as explained above, the twelve bits include the eight bits identifying unit 14 and the four bits identifying sensor means 16 (see analysis above for claim element 1b). The code is set prior to transmission of the signal via encoder 24 (Ex. 1008, 3:20-22), which provides for the setting of a digital code via DIP switches (id., 3:41-42) for each sensor means 16 and allows identification of each individual unit 14 and each sensor means 16 (id., 3:32-36). See also, id., Abstract, 1:55-58, 2:15-20, 3:36-42, 7:1-11, 9:62-10:7; Ex.1002, e) [1d] an information gathering device adapted to receive said predetermined signal, to gather information relating to said movement, and to transmit said information, and Under this term s plain and ordinary meaning, and the District Court s construction as a means-plus-function term (see Part VIII), Glidewell discloses these features. Ex. 1002, 102. For example, as shown in annotated Figure 1 below, Glidewell describes a device comprising receiver means 18 having a receiver 30, digital encoder means 32, and display unit 35 having a key pad 34 and display unit 42, alarm device 36, a detector 38, and slave transmitter 20 with encoder 46. Ex. 1008, 3:48-49, 3:61-63, 4:17-30, 4:24-29, 4:39-42, Fig. 1. As 23

29 explained below, these components are collectively a device that is an information gathering device. 7 Ex. 1002, 47-55, Ex. 1002, 103 (Demonstrative B). Glidewell discloses that receiver 30 is adapted to receive the abovedescribed predetermined signal sent from the sensor means 16 when detector 22 is 7 In the EDTX Case, the Court s interpretation does not require that the structural components of the information gathering device be present within one device. Ex. 1020,

30 triggered by movement of an object. Ex. 1008, Abstract, 1:58-65, 2:19-28, 4:51-54, 7:12-26, 10:8-19; Ex. 1002, In response to receiving the signal from sensor 16, the above-described device in Glidewell gathers information relating to the detected movement. For example, after checking the predetermined signal to see if system 12 is active and if the received signal is from a sensor means 16 associated with the same individual unit 14 as receiver means 18, receiver means 18 gathers the four bits identifying the individual sensor means 16. Ex. 1008, 4:63-5:1. Receiver means 18 then causes the code for the triggered sensor to appear on display 42, and sends the four bit sensor code to slave transmitter 20. Id., Abstract, 2:1-5, 2:37-43, 4:63-5:1, 4:43-45, 7:27-31, 10:20-34; Ex. 1002, The slave transmitter 20 component of the above-described device in Glidewell also gathers and transmits such information. For example, encoder means 46 sets a twelve bit digital code that identifies the particular predetermined unit 14 where slave transmitter 20 is located (Ex. 1008, 4:43-49), gathers and adds to the received four digital bits, twelve digital bits that designates the particular individual unit 14 relating to triggered system 12 (id., 5:2-6). See also, e.g., id., Abstract, 2:1-9, 2:37-48, 3:17-20, 4:66-5:1, 7:27-40, 10: Slave transmitter 20 then wirelessly transmits the sixteen bit coded signal to station 54. Id., Abstract, 2:1-9, 2:43-48, 5:2-6, 5:44-48, 7:40-43, 10:35-36; Ex. 1002,

31 The four digital bits identifying the individual sensor means 16 is gathered information relating to said movement because it identifies the sensor that detected the movement (e.g., door). Similarly, the twelve bits of information set by the slave transmitter 20/encoder means 46 is gathered information relating to the movement because it identifies the location of the individual unit 14 having the sensor means 16 triggered by the object movement. Ex. 1002, ; Ex. 1008, 5:44-6:11, 7:52-55, 10: Thus, Glidewell discloses a device (Demonstrative B supra) that gathers object movement-related information and performs the identified function for this claim term. Ex. 1002, ; Part VIII. Also, consistent with the Patent Owner s and Court s interpretations of information gathering device in the EDTX Case (see Part VIII), Glidewell discloses a device consisting of an RF receiver, an RF transmitter, and a power supply that performs the above-identified claimed function. Ex. 1002, Specifically, the information gathering device as disclosed in Glidewell includes a RF receiver (receiver means 18 having receiver 30) and a RF transmitter (slave transmitter 20). The receiver 30 is a RF receiver because it receives the wirelessly transmitted signal from transmitter 26, which can be the rf type. Ex. 1008, 3:43-33, 3:48-60; Ex. 1002, 113. Moreover, one of ordinary skill in the art would have understood based on the disclosure of Glidewell that the above-described information gathering device 26

32 27 Petition for Inter Partes Review (see Demonstrative B) necessarily includes a power supply. Ex. 1002, Indeed, given the disclosure of how these device components of Glidewell operate, such a skilled person would have recognized that the device formed by these components would not be operable but for a power supply. Id. To the extent such a feature is not disclosed, it would have been obvious to one of ordinary skill in the art to implement a power supply for these components in Glidewell s system to provide power to enable the circuitry in the components to operate. Such a skilled person would have been motivated to implement such features given the use of power supplies was a necessary and known concept in the technology and Glidewell s above disclosures. Ex. 1002, ; KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, , (2007). Indeed, implementing a power supply would have been a predictable and common sense implementation to Glidewell s system. KSR, 550 U.S. at f) [1e] a remote notification device adapted to receive said information from said information gathering device, to establish data communication with a remote host, and to provide said information to said remote host. Under this term s plain and ordinary meaning, and the District Court s construction as a means-plus-function term (supra, Part VIII), Glidewell discloses these features in several ways (mapping 1 and mapping 2). Ex. 1002, 47-55, Mapping 1

33 For example, as explained above for claim element 1d, Glidewell discloses that slave transmitter 20 (which is a component of the above-described information gathering device ) transmits the gathered information (e.g., the twelve bit code) to security station 54. Ex. 1008, 5:14-23, 5: Ex. 1002, 116 (Demonstrative C). Station 54 includes receiver 56 and antenna 28, which receives the transmitted information from slave transmitter 20, and provides output to interface circuitry 58. Ex. 1008, Fig. 3, 5:

34 Ex. 1002, 117 (Demonstrative D). Interface circuitry provides an output to a remote master control unit 60, which in turn communicates with remote devices over a cellular or telephone line via interface 66. Id., 5:14-28, 5:42-6:17. Ex. 1002, 117. Thus, a first way that Glidewell discloses this claim element (e.g., mapping 1) is where the device that includes station receiver 56, antenna 28, and interface circuitry 58 discloses the claimed remote notification device and master control unit 60 discloses the claimed remote host. Ex. 1002,

35 Id., 117 (Demonstrative E). Glidewell explains that station receiver 56 (along with antenna 28 and interface circuitry 58) is adapted to receive the gathered information from the information gathering device. For example, as explained above and below, the sixteen bit coded signal sent by slave transmitter 20 is received by antenna 28 and output to station receiver 56. Ex. 1008, Abstract, 2:48-48, 5:42-52, 7:45-55, 10: Glidewell explains that the security station 54 (and thus receiver 56, antenna 30

36 28, interface circuitry 58) may be remote because it may be outside the given or designated security area 52. Id., 5:17-19; Ex. 1002, The disclosed remote notification device (receiver 56, antenna 28, interface circuitry 58) is adapted to establish data communication with, and provide information related to detected object movement, to a remote host (unit 60). Ex. 1008, Abstract, 2:48-48, 5:42-52, 7:45-55, 10: A person of ordinary skill in the art would have understood that providing the sixteen bit coded signal as disclosed by Glidewell is only possible if data communication between interface circuitry 58 and the master control unit 60 is established. Ex. 1002, 120. The device formed by station receiver 56, antenna 28, and interface circuitry 58 also discloses the claimed remote notification device under Patent Owner s and the District interpretations of the claim element. See Part VIII. For instance, the device performs the identified function for this claim term as explained above. Ex. 1002, 121. As to the corresponding structure (power supply, receiver, memory, and network interface), the station receiver 56 is a receiver. Ex. 1008, 5:42-52, Fig. 3; Ex. 1002, Moreover, one of ordinary skill in the art would have understood, based on the disclosure of Glidewell, that the above-described device necessarily includes a power supply or else the device s components would not be able to operate as described in Glidewell. Ex. 1002, Similarly, the 31

37 interface circuitry 58 must necessarily include a memory in order for to receive the coded signal from station receiver 56 and transmit it to master control unit 60. Ex.1008, 5: Such memory would include register(s), buffers, and/or similar circuitry that are necessarily included in such interface circuitry to allow for receiving the coded bits, buffer the information, and provide it to master unit 60. Ex. 1002, 125. Without such structures, the interface circuitry 58 would not be able to receive and then send the coded signals transmitted by slave transmitter 20 to unit 60. Id. Indeed, the 078 patent describes memory in the remote notification device as being used to buffer received data. Ex. 1001, 12: To the extent such features are not disclosed, it would have been obvious to one of ordinary skill in the art to implement a power supply and memory with these components in Glidewell s system to provide power and store data to enable the circuitry in the components to operate as described in Glidewell. Such a skilled person would have been motivated to implement such features given that the use of power supplies and the use of memory to facilitate the receiving, buffering, and sending of the received information was necessary and known features in the technology. Ex. 1002, Implementing such features would have been a predictable solution and common sense design choice through the use of known technologies. Id.; see also KSR, 550 U.S. at

38 Interface circuitry 56 is a network interface. The communication path between interface circuit 58 and unit 60 is a connection between two separated devices that allows for communication of data between two devices, like a network. Ex. 1002, 126; Ex. 1018, 3. The 078 patent provides examples of a network interface for the remote notification device that involves circuitry that allows for sending information over a communication path between two devices. Ex. 1008, 11: Equivalents of such interfaces include circuitry that allows connections for the transmission of data in a communication path between two devices. Ex. 1002, 126; Ex. 1018, 3. Similarly, in Glidewell, the interface circuitry 58 establishes a connection between the disclosed notification device (see Demonstratives D, E) and remote host (master control unit 60) for transmission of the coded signal data. Ex. 1008, 5:44-48, Fig. 3; Ex. 1002, To the extent such features are not disclosed, it would have been obvious to one of ordinary skill in the art to implement a network interface with interface circuitry 58 to communicate with master control unit 60 over a network. Such a skilled person would have been motivated to implement such features to interface circuit 58 of the disclosed remote notification device to transmit information relating to object movement to master control unit 60 over a known communication path that provides mechanisms to facilitate the transmission of such data. Ex. 1002, 127. Indeed, implementing such features in the above-described notification device 33

39 would have been a predictable and common sense implementation of known technologies to Glidewell s system, and recognized as an alternative design to how Glidewell s system communicates detected object movement data to unit 60. Id.; see also KSR, 550 U.S. at 421. Master control unit 60 is a remote host. For example, as shown in Fig. 3, unit 60 is remote from the disclosed remote notification device (Demonstratives D, E) and is remote from the security area 52 including unit(s) 14 and system(s) 12. Ex. 1008, Figs. 2, 3, 5:7-19, 5: Master control unit 60 is also a host because it hosts information received from interface circuitry 58 for display by unit 74 (id., 5:56-66) and for sending to another remote device (e.g., phone unit of police, home, owner of designated area, etc.) (id., 5:56-6:17). Ex. 1002, 128. Master control unit 60 is also a remote host under the Patent Owner s and District Court s interpretation of the term (i.e., server at a remote location). Supra, Part VIII. Master control unit 60 includes a CPU 70, memory 72, and other components, that enable unit 60 to act like a server similar to that disclosed in the 078 patent. For example, the 078 patent describes the remote host as an information processing point or a store-and-retrieval point Ex. 1001, 12: The server-like examples of a remote host in the 078 patent includes a device that displays the received information on a monitor or forwards the information to the owner of the premises where the system 10 is located, or elsewhere. Id., 34

40 12: Just like these examples, Glidewell explains that the master control unit 60 outputs information to display unit 74 that displays, inter alia, individual unit identification. Ex. 1008, 5: Likewise, Glidewell explains that master control unit 60 forwards information to the police, security business, owner of designated security area, etc., to provide, inter alia, the individual unit identification. Id., 5:64-6:11. In this way, master control unit 60 is a server as it services alarm events for the security area 50 being monitored and acts as a centralized resource of that information, and does so by performing operations similar to those of the server aspect of the remote host disclosed in the 078 patent. Ex. 1002, To the extent Glidewell does not disclose master control unit as a server, it would have been obvious to implement the device as a server to provide servertype functionalities in the disclosed security system. One skilled in the art would have been motivated to configure master control unit as a server to communicate with interface circuit 58 (part of remote notification device above) and the remote stations (e.g., police, owner of secured area, etc.) given unit 60 is programmed with a CPU 70 and memory 72 to perform services based on the information provided by system 12. Ex. 1002, 131. Implementing such features would have been a predictable and common sense application of known technologies that respond to information and processes it or stores and forwards it in the security and monitoring art. Id.; see also KSR, 550 U.S. at 421. Indeed, one of ordinary skill in 35

41 the art would have recognized advantages in using a server to process and forward security information like that disclosed in Glidewell, such as providing a central location to store, present, and provide access to the gathered information relating to detected object movement. Ex. 1002, 131. The 078 patent acknowledges such features were known before the alleged invention and used as a remote notification device. Ex. 1001, 11:28-39; Part VII.B. Mapping 2 The second way Glidewell discloses this claim element (mapping 2) is that security station 54 discloses a remote notification device and the remote location device that receives the object movement information from station 54 discloses a remote host. 36

42 Ex. 1002, 132, (Demonstrative F). For instance, as explained above for mapping 1, receiver 56 (part of station 54, which can be remote from security area 52) is a receiver that receives the information relating to detected object movement from slave transmitter 20 (part of the disclosed information gathering device). Ex. 1008, 5:14-23, 5: Also explained above is how Glidewell discloses that the components relating to components 56 and 58 necessarily includes a power supply and memory, like that required under the District Court s construction. See above for mapping 1; Part VI; Ex. 1002, In this mapping 2, Glidewell also discloses the other features of this claim element. Ex. 1002, For example, security station 54 includes master unit 60, which also includes a memory (Ex. 1008, Fig. 4), and a network interface that establishes communication with, and provides the object movement information to, the remote location device (remote host). Ex. 1008, 5:14-28, 5:42-6:17. Glidewell explains that unit 60 transmits the information (e.g., including unit identification and alarm type data) to the remote location device over line 66, which can be connected to the telephone line jack of the telephone line to the telephone company or to a cellular telephone, that connects to the remote location device. Id., 5:20-28, 5:64-6:17, Fig. 3. Line 66 is connected to a telephone or cellular network, and thus is a network interface. Moreover, one skilled in the art would have recognized that unit 37

43 60 must necessarily include interface circuitry that enables communications over line 66 and the telephone network, otherwise the communications disclosed by Glidewell could not be performed. Ex. 1002, Indeed, Glidewell discloses speech synthesizer 78 that interfaces between CPU 70 and DAA 82, which connects to line 66, to provide communications to the remote location device. (Ex. 1008, Fig. 4, 5:23-41.) The remote location device (e.g., associated with the police, security business, etc.) receives the information relating to the detected movement provided by station 54 via line 66, and is remote from the security area 52 and station 54 (Ex. 1008, Figs. 2, 3) and operates as a device for processing the signals received over line 66 to convey the object movement information for responsive action (id., 1:5-11, 6:2-17.) In this way, it operates as a remote host, such as an information processing point consistent with the remote host functions disclosed by the 078 patent. Ex. 1008, 5:64-6:17; Ex. 1001, 12:53-56; Ex. 1002, Further, to the extent Glidewell does not explicitly describe the remote location device (Demonstrative F) as a server (as required under the constructions identified in Part VIII)), one of ordinary skill in the art would have found it obvious to implement the remote location device disclosed by Glidewell as a server to provide server-type functionalities in the disclosed security system. One skilled in the art would have been motivated to modify Glidewell s system in this 38

44 way to provide additional features at the remote location so that the received movement information can be assessed for responsive purposes y the entities described by Glidewell (e.g., police, security business (Ex. 1008, 5:64-67)). Implementing a server at the remote location to receive the object movement information from station 54 would have been a predictable and common sense application of technologies known to such a skilled person, which would have enabled Glidewell s system to not only receive the information, but also process and/or store it for security purposes in line with Glidewell s security system. Ex. 1002, 137; Ex. 1008, 6:2-17, 6: Such a skilled person would have recognized advantages in using a server at the remote location to receive, store, and process the received object movement information, and thus would have considered such an implementation a design choice in the way Glidewell handles security related tasks responsive to detected unauthorized object movement. Ex. 1002, 137. B. Ground 2: Glidewell and Lai Render Obvious Claim 1-6 and Claim 1 As explained above for ground 1, Glidewell discloses the limitations of claim 1. See citations and analysis above in Part IX.A.1; Ex. 1002, In this ground, Petitioner demonstrates how Glidewell in view of Lai discloses the features of claim element 1d under Patent Owner s interpretation. Specifically, 39