Unified Patents Inc. v. Wireless Monitoring Systems, LLC, IPR2017-00027 (PTAB Oct. 6, 2017)

IPR2018-00027 Petition
Patent 9,280,886
DOCKET NO.: 2211726-00149

Filed on behalf of Unified Patents Inc.
By:
David L. Cavanaugh, Reg. No. 36,476 (David.Cavanaugh@wilmerhale.com)
Daniel V. Williams, Reg. No. 45,221 (Daniel.Williams@wilmerhale.com)
Evelyn C. Mak, Reg. No. 50,492 (Evelyn.Mak@wilmerhale.com)
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
Roshan Mansinghani, Reg. No. 62,429 (roshan@unifiedpatents.com)

Jonathan Stroud, Reg. No. 72,518 (jonathan@unifiedpatents.com)
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, DC, 20009
Tel: (202) 805-8931
UNITED STATES PATENT AND TRADEMARK OFFICE

____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
WIRELESS MONITORING SYSTEMS LLC

Patent Owner
IPR2018-00027
Patent 9,280,886
PETITION FOR INTER PARTES REVIEW OF

U.S. PATENT NO. 9,280,886
CHALLENGING CLAIMS 1-2, 4-6, 9-10, 29, 35, 37-42, 51-54
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
Patent 9,280,886
TABLE OF CONTENTS
Page
I. MANDATORY NOTICES ............................................................................. 3
A. Real Party-in-Interest ............................................................................ 3

B. Related Matters...................................................................................... 3
C. Counsel .................................................................................................. 4
D. Service Information, Email, Hand Delivery and Postal ........................ 4
II. CERTIFICATION OF GROUNDS FOR STANDING .................................. 4
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 4
A. Prior Art Patents and Printed Publications ............................................ 5
1. U.S. Pat. 6,215,405 (filed on May 11, 1998; published on

Apr. 10, 2001) (Handley (EX1003)), which is prior art
under 35 U.S.C. 102(e) ............................................................ 5
2. U.S. Pat. 5,499,196 (filed on Oct. 19, 1993; published on
Mar. 12, 1996) (Pacheco (EX1004)), which is prior art
under 35 U.S.C. 102(b) ............................................................ 5
3. U.S. Pat. 6,057,549 (filed on May 30, 1997; published on
May 2, 2000) (Castleman (EX1005)), which is prior art
under 35 U.S.C. 102(a) ............................................................ 5
4. U.S. Pat. 6,360,277 (filed on Jul. 22, 1998; published on
Mar. 19, 2002) (Ruckley (EX1006)), which is prior art
under 35 U.S.C. 102(e) ............................................................ 5
B. Grounds for Challenge .......................................................................... 5
IV. TECHNOLOGY BACKGROUND................................................................. 6
V. OVERVIEW OF THE 886 PATENT ............................................................ 8
A. Summary of the Alleged Invention ....................................................... 8

B. Level of Ordinary Skill in the Art ....................................................... 13
C. Prosecution History ............................................................................. 13
VI. CLAIM CONSTRUCTION .......................................................................... 15
A. Means-Plus-Function Terms ............................................................... 16
1
Patent 9,280,886
1. a comparison module configured to (claim 1) .................. 18

2. a communication module configured to (claim 1) ............ 19
3. a circuit monitoring module configured to (claim 29) ...... 20
4. a communications module to (claim 29) ........................... 22
VII. SPECIFIC GROUNDS FOR PETITION ...................................................... 23
A. Ground I: Claims 1-2, 4-6, 9-10, 38-42, 51 are rendered obvious by

Handley in view of Pacheco ............................................................... 23
1. Overview of Handley ................................................................ 23

2. Overview of Pacheco ................................................................ 27
3. Reasons to Combine Handley and Pacheco ............................. 30
4. Claim 1 ...................................................................................... 34
5. Claim 2 ...................................................................................... 48
6. Claim 4 ...................................................................................... 49
7. Claim 5 ...................................................................................... 50
8. Claim 6 ...................................................................................... 50
9. Claim 9 ...................................................................................... 50
10. Claim 10 .................................................................................... 50
11. Claim 38 .................................................................................... 51
12. Claim 39 .................................................................................... 52
13. Claim 40 .................................................................................... 53
14. Claim 41 .................................................................................... 53
15. Claim 42 .................................................................................... 53
16. Claim 51 .................................................................................... 54
B. Ground II: Claims 29, 35, 37, 52-54 are rendered obvious by Handley
in view of Pacheco, Castleman, and Ruckley ..................................... 55
1. Overview of Castleman ............................................................ 55

2. Overview of Ruckley ................................................................. 58
3. Claim 29 .................................................................................... 59
4. Claim 35 .................................................................................... 76
5. Claim 37 .................................................................................... 76
6. Claim 52 .................................................................................... 77
7. Claim 53 .................................................................................... 77
8. Claim 54 .................................................................................... 78
VIII. CONCLUSION.............................................................................................. 79
2
Patent 9,280,886
I. MANDATORY NOTICES
A. Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial.
B. Related Matters
U.S. Pat. No. 9,280,886 (886 patent (EX1001)) is owned by Wireless
Monitoring Systems, LLC (Patent Owner).
The 886 patent is the subject of the following pending district court
proceedings: Wireless Monitoring Systems LLC v. AT&T Inc. et al., 2-17-cv-
00501 (E.D. Tex.); Wireless Monitoring Systems LLC v. Comcast Corporation, 2-
17-cv-00502 (E.D. Tex.); Wireless Monitoring Systems LLC v. MONI Security, LP,
2-17-cv-00503 (E.D. Tex.); Wireless Monitoring Systems LLC v. Smith Thompson
Security, LLC, 2-17-cv-00504 (E.D. Tex.); Wireless Monitoring Systems LLC v.
Charter Communications, Inc., 2-17-cv-00505 (E.D. Tex.); Wireless Monitoring
Systems LLC v. Vector Security, Inc., 2-17-cv-00506 (E.D. Tex.).
3
Patent 9,280,886
C. Counsel
David L. Cavanaugh (Reg. No. 36,476) will act as lead counsel; Roshan
Mansinghani (Reg. No. 62,429) will act as primary back-up counsel; and Jonathan
Stroud (Reg. No. 72,518), Daniel V. Williams (Reg. No. 45,221), and Evelyn C.
Mak (Reg. No. 50,492) will act as back-up counsel.
D. Service Information, Email, Hand Delivery and Postal
Unified consents to electronic service at david.cavanaugh@wilmerhale.com
and roshan@unifiedpatents.com. Petitioner can be reached at Wilmer Cutler
Pickering Hale and Dorr, LLP, 1875 Pennsylvania Ave., NW, Washington, DC
20006, Tel: (202) 663-6000, Fax: (202) 663-6363, and Unified Patents Inc., 1875
Connecticut Ave. NW, Floor 10, Washington, DC 20009, Tel: (650) 999-0889.
II. CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges
claims 1-2, 4-6, 9-10, 29, 35, 37-42, 51-54 of the 886 patent.
4
Patent 9,280,886
A. Prior Art Patents and Printed Publications
The following references are pertinent to the grounds of unpatentability
explained below:1
1. U.S. Pat. 6,215,405 (filed on May 11, 1998; published on Apr. 10,
2001) (Handley (EX1003)), which is prior art under 35 U.S.C.
102(e)
2. U.S. Pat. 5,499,196 (filed on Oct. 19, 1993; published on Mar. 12,
1996) (Pacheco (EX1004)), which is prior art under 35 U.S.C.
102(b)
3. U.S. Pat. 6,057,549 (filed on May 30, 1997; published on May 2,
2000) (Castleman (EX1005)), which is prior art under 35 U.S.C.
102(a)
4. U.S. Pat. 6,360,277 (filed on Jul. 22, 1998; published on Mar. 19,
2002) (Ruckley (EX1006)), which is prior art under 35 U.S.C.
102(e)
B. Grounds for Challenge
This Petition, supported by the declaration of Professor Paul Franzon
(Franzon Declaration or Franzon (EX1002)), requests cancellation of
challenged claims 1-2, 4-6, 9-10, 29, 35, 37-42, 51-54 as unpatentable under 35
U.S.C. 103. See 35 U.S.C. 314(a).
1
The 886 patent issued from a patent application filed prior to enactment of the
America Invents Act (AIA). Accordingly, the pre-AIA statutory framework
applies.
5
Patent 9,280,886
IV. TECHNOLOGY BACKGROUND
By December 2000, it was well known to provide devices for monitoring the
status of circuits in alarm systems, security management systems, fire systems, and
building management systems. (886 patent at 1:37-59 (EX1001); Handley at
2:55-65, Fig. 1 (EX1003); Pacheco at 4:65-5:3, Fig. 1 (EX1004); Franzon 16
(EX1002)).
In these alarm or security systems, it was known to provide circuits, such as
sensors, to monitor a zone or area of protection. (Handley at 2:60-62 (EX1003);
Franzon 17 (EX1002)). These systems supported many different types of sensors
that could monitor for different conditions within a specified area. For example, it
was known to use sensors such as motion detectors, fire detectors, water detectors,
glass break detectors, door/window contacts, shock sensors, switches, keypads,
temperature sensors, etc. (Handley at 2:60-65 (EX1003); Pacheco at 5:19-29
(EX1004); Franzon 17 (EX1002)).
In these alarm/security systems, it was also known to provide a monitoring
device (e.g., alarm panel, alarm interface, keyboard controller) that could receive
data from these sensors and use this data to detect for a normal condition or for one
or more alarm conditions in the specified area associated with a sensor. (Handley
at 2:55-3:16, 4:47-5:48, Figs. 1-3 (EX1003); Pacheco at 4:65-5:29, 6:45-7:18,
Figs. 1-3 (EX1004); Franzon 18 (EX1002)). It was further known that this
6
Patent 9,280,886
monitoring device typically included a processor, among other circuit components,
that received the data from the sensors, compared the data from each sensor to one
more thresholds that corresponded to different conditions (e.g., normal/alarm, door
open/closed, fire/water not detected/detected, temperature below/exceeded a
threshold), and assigned a status (e.g., set a flag or bit to logical 0 or 1
depending on the condition) based on the comparison. (Handley at 3:42-48, 4:47-
5:48, Figs. 1-3 (EX1003); Pacheco at 5:19-29, 6:45-7:18, Figs. 2-3 (EX1004);
Castleman at 15:7-35, Figs. 11-12 (EX1005); Franzon 18 (EX1002)).
In these alarm/security systems, it was also known that this monitoring
device could then transmit the assigned status information from the sensors to a
remote monitoring system over a network that uses a telephone dialer, cellular
telephone technology, or other means of wired or wireless communication.
(Handley at 3:2-12, Fig. 1 (EX1003); Pacheco at 4:66-5:3, Figs. 1-2 (EX1004);
Franzon 19 (EX1002)). To transmit the assigned status, it was known that this
monitoring device included a transmitter as well as additional hardware and/or
software that could support different industry standard network topologies and
protocols including, for example, Fieldbus, process field bus (PROFIBUS),
Seriplex, smart distributed system (SDS), DeviceNet, and controller area network
(CAN). (Id.; Ruckley at Abstract (EX1006); Franzon 19 (EX1002)).
7
Patent 9,280,886
In these alarm/security systems, it was known that multiple monitoring
systems from different areas (e.g., different houses, buildings, parts of a structure)
could transmit the assigned status information for their corresponding sensors to
the same remote monitoring station. (Pacheco at 1:25-43 (EX1004); Franzon 20
(EX1002)). It was also known that the remote monitoring system was a computer
system having a monitor that would display specific alarm information about the
various monitoring circuits. (Pacheco at 4:31-41, 13:50-14:15, Figs. 1, 8C
(EX1004); Franzon 20 (EX1002)). It was further known that personnel at the
remote monitoring system could use this specific alarm information to take the
appropriate action. (Handley at 4:66-5:3 (EX1003); Pacheco at 1:33-60 (EX1004);
Franzon 20 (EX1002)). For example, if the specific alarm information indicates
an alarm condition for a sensor associated with a monitoring device located at a
building that requires immediate attention (e.g., a fire has been detected), the
personnel could immediately dispatch a firetruck to that building. (Franzon 20
(EX1002)).
V. OVERVIEW OF THE 886 PATENT
A. Summary of the Alleged Invention
The background section of the 886 patent describes prior art security
management systems (SMS), problems associated with upgrading and modifying
these known SMS systems, known attempts to address these problems, and
8
Patent 9,280,886
problems associated with these known attempts. (886 patent at 1:37-3:13
(EX1001)). The 886 patent purports to solve these problems by providing
monitoring systems that are especially useful in security management systems,
fire systems and building management systems. (Id. at 1:26-30 (EX1001)).
These monitoring system purport to allow[] the retrofit of existing security
management systems, fire systems and building management systems, while
utilising the existing circuit wiring regardless of existing resistance values.
Retrofits and new installations may use various PLCs and operator interfaces, and
a variety of hardware and software, instead of being locked into proprietary
hardware and software. (Id. at 4:28-35 (EX1001)). (Franzon 21 (EX1002)).
Figure 2 shows a monitoring system having three components: a centralized
SMS control unit (element 5 shown in red), multiple circuit monitoring devices
(elements 10, 20, 30 shown in blue), and multiple field devices (elements A, B, C
shown in green). (886 patent at 4:66-5:8, Fig. 2 (EX1001)). The circuit
monitoring devices monitor the status of various [electrical] circuits containing
field devices such as motion detectors, read switches on doors and windows,
smoke detectors, etc. (Id. at 5:1-5 (EX1001)). The SMS control unit includes a
communications module (element 7) and a programmable logic controller (PLC)
having a microprocessor (element 6) that reads the status of the various electrical
9
Patent 9,280,886
circuits from the associated circuit monitoring devices. (Id. at 5:9-15, 7:45-54, Fig.
2 (EX1001)). (Franzon 22 (EX1002)).
Figure 3 shows the block diagram for the circuit monitoring devices in
Figure 2. (886 patent at 4:50-51, 5:62-63, Fig. 3 (EX1001)). The circuit
monitoring device includes an operational amplifier (OPAMP) (element 40
shown in red), an analog to digital (A/D) converter (element 41 shown in brown),
a microprocessor (element 42 shown in orange), and a communication module
10
Patent 9,280,886
(element 43 shown in purple). (Id. at 5:63-66, Fig. 2 (EX1001)). (Franzon 23
(EX1002)).
The OPAMP receives as input an analog signal from the field device. (Id. at
5:66-6:1 (EX1001)). The A/D converter converts the analog signal from the
OPAMP to a count value representing a numerical representation of the end-of-line
resistance of the field device. (886 patent at 6:1-4 (EX1001)). The
microprocessor compares the count value to various thresholds to determine the
status of the field device. (Id. at 6:5-8 (EX1001)). The communication module
communicates the result of the comparison to the SMS control unit. (Id. at 6:8-16
(EX1001)). (Franzon 24 (EX1002)).
Figure 4 of the 886 patent shows a diagrammatic representation of the
comparisons performed by the microprocessor in the circuit monitoring device to
determine the status of the field device. (886 patent at 6:34-41, Fig. 4 (EX1001)).
11
Patent 9,280,886
The microprocessor compares the measured count value to each of four thresholds:
(1) 8,000; (2) 15,000; (3) 16,000; and (4) 30,000. (Id. at 7:17-19, 7:25-26, Fig. 4
(EX1001)). The four thresholds result in five different threshold ranges, each of
which corresponds to one of five different status conditions:
(1) count value between 0 and 8,000Open Circuit condition assigned;
(2) count value between 8,000 and 15,000Alarm 1 condition assigned;
(3) count value between 15,000 and 16,000Normal condition assigned;
(4) count value between 16,000 and 30,000Alarm 2 condition assigned; and
(5) count value between 30,000 and 32,767Short Circuit condition assigned.
(Id. at 6:37-48, Fig. 4 (EX1001)). Based on the comparison, the microprocessor
generates an output in the form of individual flags or digital bits that are
12
Patent 9,280,886
transmitted to the SMS control unit. (Id. at 7:25-33, 7:38-40 (EX1001)). (Franzon
25 (EX1002)).
The 886 patent describes two types of communication modules in the
circuit monitoring device. In one type, the communication module is adapted for
communication across the back plane of the PLC to the microprocessor 6. (886
patent at 6:11-13, Fig. 2 (EX1001)). In another type, the communication module
is a DeviceNet communication module implementing the DeviceNet
communication standard. (Id. at 6:13-16, Fig. 2 (EX1001)). (Franzon 26
(EX1002)).
B. Level of Ordinary Skill in the Art
A person of ordinary skill in the art at the time of the filing of the earliest
priority application for the 886 patent, i.e., December 4, 2000, would have at least
a Bachelor of Science degree in Electrical Engineering or an equivalent field, as
well as at least 2-3 years of academic or industry experience in circuit design,
microprocessor programming, and network interfaces, or comparable industry
experience(s). (Franzon 31 (EX1002)).
C. Prosecution History
The application for the 886 patent was filed November 13, 2014. It claims
priority as a continuation of U.S. Pat. No. 8,816,869, filed on July 1, 2013, which
is a continuation of U.S. Pat. No. 8,912,893, filed on September 30, 2010 (893
13
Patent 9,280,886
patent), which is a continuation of U.S. Pat. No. 7,834,744, filed on July 13, 2007,
which is a continuation of U.S. Pat. No. 7,256,683, filed on December 3, 2001
(683 patent), which claims priority to Australian Appl. No. PR1878, filed on
December 4, 2000. (886 patent at cover page (EX1001)).
A week after filing, the Applicant filed a Preliminary Amendment that
cancelled originally-filed claims 1-20 and added new claims 21-57 (application
claims 21 and 49 correspond to issued claims 1 and 29, respectively). (File
History, 11/21/14 Preliminary Amendment at 3-13 (EX1007)).
In the only Office Action dated March 11, 2015, the Examiner rejected
many of the claims (including claims 21 and 49) based on non-statutory double
patenting over various claims of the 893 and 683 patents. (File History, 3/11/15
Office Action at 1, 3 (EX1008)). The Applicant filed a Response adding new
claims and filing a terminal disclaimer over the 893 and 683 patents. (File
History, 5/26/15 Response at 1 (EX1009); File History, 5/26/15 Terminal
Disclaimer at 1 (EX1010)).
Then the Examiner allowed the claims. (File History, 10/7/15 Notice of
Allowability at 2 (EX1011)). The Examiners reasons for allowance for
independent claims 21, 31, and 49 were based on the claimed comparison module
configured to. (Id. (EX1011)). The Examiner stated that the following
limitations from claims 49-57 and 72-74 were subject to means-plus-function
14
Patent 9,280,886
under 35 U.S.C. 112, 6: a circuit monitoring module configured to and a
communications module to. (Id. at 3 (EX1011)). The Examiner then identified
the corresponding structures for these limitations: communications module 43, fig.
3, circuit monitoring module 10, 20, 30, fig. 2. (Id. (EX1011)). (See generally
Franzon 27-30 (EX1002)).
VI. CLAIM CONSTRUCTION
Claim terms of an unexpired patent in inter partes review, as here, are given
the broadest reasonable construction in light of the specification. 37 C.F.R.
42.100(b); In re Cuozzo Speed Techs., LLC 778 F.3d 1271, 127981 (Fed. Cir.
2015). Any claim term that lacks a definition in the specification is therefore given
a broad interpretation.2 In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as they would be
understood by one of ordinary skill in the art, in the context of the disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
definition for a claim term must be set forth in the specification with reasonable
clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994).
2
Petitioner applies the broadest reasonable construction standard as required by
the governing regulations. 37 C.F.R. 42.100(b).
15
Patent 9,280,886
The following proposes several constructions and offers support for those
constructions. Any claim terms not included should be given their broadest
reasonable interpretation in light of the specification, as commonly understood by
those of ordinary skill in the art. Should the Patent Owner, to avoid the prior art,
contend that a claim term has a construction different from its broadest reasonable
interpretation, the appropriate course is for the Patent Owner to seek to amend the
claim to expressly correspond to its contentions in this proceeding. See 77 Fed.
Reg. 48764 (Aug. 14, 2012).
A. Means-Plus-Function Terms
Claims 1 and 29 include module terms that should be construed as means-
plus-function limitations under 35 U.S.C. 112, 6. (886 patent at claims 1, 29
(EX1001)).
A claim term that does not recite the word means can still invoke 35
U.S.C. 112, 6 if the term fails to recite[] sufficiently definite structure or else
recites function without reciting sufficient structure for performing that
function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015). Generic terms such as mechanism, element, device, and other nonce
words that reflect nothing more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word means because they typically do not
connote sufficiently definite structure and therefore may invoke 112, para. 6.
16
Patent 9,280,886
Id. at 1340. Module is a well-known nonce word that can operate as a substitute
for means in the context of 112, para. 6 because it is simply a generic
description for software or hardware that performs a specified function. Id.
When construing a means-plus-function limitation, the claimed function
must be identified, and then the corresponding structure that performs the claimed
function must be identified in the specification. Med. Instrumentation &
Diagnostics Corp. v. Elektra AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). A means-
plus-function claim term is limited to the structures disclosed in the specification
and equivalents. Id. In a means-plus-function claim in which the disclosed
structure is a computer, or microprocessor, programmed to carry out an algorithm,
the disclosed structure is not the general purpose computer, but rather the special
purpose computer programmed to perform the disclosed algorithm. WMS
Gaming Inc. v. Intl Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
The limitations a comparison module configured to (claim 1), a
comparison module configured to (claim 1), a circuit monitoring module
configured to (claim 29), and a communications module to (claim 29) each
uses the nonce word module and merely recites function without reciting
sufficient structure for performing that function. (886 patent at claims 1, 29
(EX1001)). In addition, during prosecution of the 886 patent, the Examiner found
the two module limitations of claim 29 subject to means-to-function. (See
17
Patent 9,280,886
Section V.C (Prosecution History)). Accordingly, each of these limitations should
be construed as a means-plus-function limitation. (Franzon 43 (EX1002)).
1. a comparison module configured to (claim 1)
Function: Claim 1 recites the following function for the comparison
module:
(1) compare a digital value, which corresponds to a magnitude of the
measured electrical parameter, to at least one threshold value stored in the
memory, wherein the threshold value defines at least one range of digital values,
and
(2) assign a status based on the digital value being within the particular
range defined by the threshold value. (886 patent at claim 1 (EX1001)).
Structure: The specification does not recite the term comparison module.
Claim 1 recites a processor having modules comprising software to configure
the processor that include the comparison module. Accordingly, the structure
needs to be a special-purpose computer programmed to perform the disclosed
algorithm. As structure, the specification discloses a processor programmed to
perform the following steps:
(1) compare a digital value to at least one threshold value,
(2) if the digital value is below the at least one threshold value that falls
within a first range of digital values, assign a first condition to the circuit, and
18
Patent 9,280,886
(3) if the digital value is above the at least one threshold value that falls
within a second range of digital values, assign a second condition to the circuit.
(886 patent at 6:5-8, 6:34-48, 7:17-19, 7:25-40, Figs. 3-4, claim 1 (EX1001); see
also Section V.A (Summary of the Alleged Invention)). The corresponding
structure also includes equivalents of the disclosed structure. (See generally
Franzon 44-45 (EX1002)).
2. a communication module configured to (claim 1)
Function: Claim 1 recites the following function for the communication
module: generate a status signal including at least the assigned status. (886
patent at claim 1 (EX1001)).
Structure: The specification does not recite the term communication
module in the context of claim 1.3 Claim 1 recites a processor having modules
comprising software to configure the processor that include the communication
module. Accordingly, the structure needs to be a special-purpose computer
programmed to perform the disclosed algorithm. As structure, the specification
discloses a processor programmed to perform the following steps:
(1) if a first condition is assigned to the circuit, set a first flag (or bit),
3
Claim 29 recites the term communications module. (886 patent at claim 29
(EX1001)). While claims 1 and 29 recite a similar term, each claim uses the term
differently by reciting a different function, and thus requires a different structure.
19
Patent 9,280,886
(2) if a second condition is assigned to the circuit, set a second flag (or bit),
and
(3) produce a status signal that includes at least the first flag (or bit) and the
second flag (or bit).
(886 patent at 6:5-10, 7:25-40, Figs. 3-4, claim 1 (EX1001); see also Section V.A
(Summary of the Alleged Invention)). The corresponding structure also includes
equivalents of the disclosed structure. (See generally Franzon 46-47 (EX1002)).
3. a circuit monitoring module configured to (claim 29)
Function: Claim 29 recites the following function for the circuit
monitoring module: receive a parameter of the circuit, compare the parameter to
at least one threshold value and assign a discrete value concerning the circuit based
on the comparison. (886 patent at claim 29 (EX1001)).
Structure: During prosecution of the 886 patent, the Examiner identified
the corresponding structure for the circuit monitoring module as the circuit
monitoring module 10, 20, 30, fig. 2. (See Section V.C (Prosecution History)).
The specification does not recite the term circuit monitoring module, but uses
the term circuit monitoring device. Fig. 2 and the corresponding description
describe each of elements 10, 20, and 30 as a circuit monitoring device. (886
patent at 4:47-49, 5:5-8, 5:24-28, 5:37-61, Fig. 2 (EX1001)). Fig. 3 and the
corresponding description describe the circuit for the circuit monitoring device,
20
Patent 9,280,886
which includes an operational amplifier (OPAMP) (element 40), an analog to
digital (A/D) converter (element 41), a microprocessor (element 42), and a
communication module (element 43). (Id. at 5:62-6:10, Fig. 3 (EX1001)).
As structure, the specification discloses an OPAMP, an A/D converter, and a
microprocessor.4 The OPAMP, which receives a parameter of the circuit, has an
output that is coupled to the input of the A/D converter. The A/D converter has an
output that is coupled to the input of the microprocessor. The microprocessor is
programmed to perform the following steps:
(1) receive a digital value from the A/D converter,
(2) compare the digital value to at least one threshold value,
(3) if the digital value is below the at least one threshold value that falls
within a first range of digital values, assign a first condition to the circuit, and
(4) if the digital value is above the at least one threshold value that falls
within a second range of digital values, assign a second condition to the circuit.
(Id. at 5:62-6:10, 6:34-48, 7:17-19, 7:25-40, Figs. 3-4, claim 29 (EX1001); see also
Section V.A (Summary of the Alleged Invention)). The corresponding structure
4
The circuit monitoring module does not include the communication module
(element 43) in the circuit monitoring device because claim 29 separately recites a
communications module.
21
Patent 9,280,886
also includes equivalents of the disclosed structure. (See generally Franzon 48-
50 (EX1002)).
4. a communications module to (claim 29)
Function: Claim 29 recites the following function for the communications
module: communicate a signal indicative of the assigned value and an
identification of the circuit monitoring module to the central system over a
network. (886 patent at claim 29 (EX1001)).
Structure: During prosecution of the 886 patent, the Examiner identified
the corresponding structure for the communications module as the
communications module 43, fig. 3. (See Section V.C (Prosecution History)).
The specification only recites the term communication module in describing
element 43 in Fig. 3. 5 (886 patent at 5:66 (communication module 43), Fig. 3
(EX1001)). Fig. 3 and the corresponding description describe two different types
of structures for the communication module 43. (Id. at 5:50-53, 5:62-6:10, 6:11-
16, Fig. 3 (EX1001)).
As structures, the specification discloses the following:

5
The description in the specification of the communication module 43
corresponds to the function of the communications module in claim 29. (Cf.
886 patent at 6:11-16 with id. at claim 29).
22
Patent 9,280,886
(1) a device adapted for communication across the back plane of a
programmable logic controller to a microprocessor, or
(2) a DeviceNetTM communication module implementing the DeviceNetTM
communication standard.
(Id.; see also Section V.A (Summary of the Alleged Invention)). The
corresponding structure also includes equivalents of the disclosed structures. (See
generally Franzon 51-53 (EX1002)).
VII. SPECIFIC GROUNDS FOR PETITION
Pursuant to Rule 42.104(b)(4)(5), the following sections (as confirmed in
the Franzon Declaration 54-141 (EX1002)) detail the grounds of unpatentability,
the limitations of the challenged claims of the 886 patent, and how these claims
were therefore obvious in view of the prior art.
A. Ground I: Claims 1-2, 4-6, 9-10, 38-42, 51 are rendered obvious

by Handley in view of Pacheco
Handley and Pacheco are not of record in the 886 patent.
1. Overview of Handley
Handley is directed to a programmable temperature sensor for a device as
part of a security system and the device having such programmable temperature
sensor. (Handley at 1:5-7 (EX1003)).
23
Patent 9,280,886
Figure 1 shows a security or alarm system having a remote monitoring
station (element 14 shown in red), an alarm control panel coupled to a keypad
controller (elements 10, 20 shown in blue), and multiple detection devices or
sensors (element 12 shown in dark green). (Handley at 2:55-3:16, Fig. 1
(EX1003)).
The sensors (element 12) are used for monitoring a zone or area of protection,
and can include motion detectors, door contacts, glass break detectors, shock
sensors, fire detectors, water detectors, etc. (Id. at 2:60-65 (EX1003)). The
sensors are connected to the alarm control panel, which controls the operation of
the overall system and reports to the remote monitoring station. (Id. at 2:58-59,
3:2-3 (EX1003)). (Franzon 55 (EX1002)).
24
Patent 9,280,886
The keypad controller is also connected to the alarm control panel for
allowing the user to interface with the alarm system, to program the system and
control the operation of the system and for displaying the status of the system and
its various components. (Handley at 3:12-16 (EX1003)). As shown in Figure 1,
the keypad controller includes a temperature sensor (element 32 shown in light
green), a non-volatile memory (element 30 shown in pink), a processing means
(element 28 shown in orange) and a system input/output (I/O) interface (element
22 shown in purple). (Id. at 3:17-24, 3:42-63 (EX1003)). (Franzon 56
(EX1002)).
The temperature sensor monitor[s] the temperature in the space in which
the keypad controller is to be located and includes at least one alarm set point
programmable as to level. (Handley at 2:33-36 (EX1003)). The temperature
sensor is also provided with an interface or signal conditioning means to allow the
processing means 28 to receive a signal indicative of the temperature, compare this
signal against one or more set points and take the appropriate action. (Id. at 3:59-
63 (EX1003)). (Franzon 57 (EX1002)).
Figure 2 shows the concept of a keypad controller interpreting data from a
temperature sensor having the following three set points or thresholds to which the
alarm system will respond: (1) the ALARM 1 threshold, which may signal a local
trouble condition; (2) the ALARM 2 threshold, which may signal an alarm and
25
Patent 9,280,886
initiate an alarm transmission to a remote monitoring station; and (3) the ALARM
3 threshold, which may activate a back-up cooling system. (Handley at 4:47-5:8,
Fig. 2 (EX1003)). There are also various RESTORE thresholds that are used to
deactivate or clear the corresponding alarm condition. (Id. at 5:8-19, Fig. 2
(EX1003)). (Franzon 58 (EX1002)).
Figure 3 shows how the processing means monitors the temperature using
the multiple thresholds and uses flags to track the current state of each alarm level.
(Handley at 5:20-48, Fig. 3 (EX1003)). (Franzon 59 (EX1002)).
26
Patent 9,280,886
2. Overview of Pacheco
Pacheco is directed to providing an improved computer-based notification
system for reporting the occurrence of events within a monitored structure which is
capable of providing enhanced information regarding the nature of alarm
conditions detected by each sensor included as part of the notification system.
(Pacheco at 2:9-15 (EX1004)).
Figure 1 shows a computer-based notification system having a computer
system with a video monitor, mouse, and keyboard (elements 12, 14, 16, 18
shown in red), an alarm interface (element 26 shown in blue), and multiple
sensors (elements 28-1 through 28-N shown in green). (Pacheco at 4:31-41,
27
Patent 9,280,886
4:65-67, Fig. 1 (EX1004)). The sensors can include switches, motion detectors,
keypads, temperature sensors, or other commercially available type of sensors. (Id.
at 5:19-50 (EX1004)). (Franzon 61 (EX1002)).
The alarm interface, shown in more detail in Figure 2, includes a
microprocessor (element 44 shown in orange) that, for each sensor, receives
information from the sensor, determines its state, and stores its state in a respective
data register (element 46 shown in pink). (Pacheco at 4:65-5:3, 6:16-25, 6:45-
7:30, Figs. 2-3 (EX1004)). The alarm interface also includes an RS 485 type
interface (element 52 shown in purple) for transmitting the processed information
to the computer system. (Id. at 4:65-5:3, 6:16-25, Fig. 2 (EX1004)). (Franzon 62
(EX1002)).
28
Patent 9,280,886
Figure 8C shows a sensor function GUI that provides user access to the
sensor function and can be displayed on the computer systems video monitor.
(Pacheco at 13:51-53, Fig. 8C (EX1004)). The GUI includes an information block
(element 266) the identifies, for each sensor, the sensor (SEN) number (e.g., 0001,
002), location (e.g., front door, back door), sensor type (e.g., keypad, switch,
motion, temperature), status (e.g., high, low), delay enablement indication means
(DLY) (e.g., yes, no), enablement indicator means (EN) (e.g., yes, no), sensor
sensitivity means (SEN) (e.g., 1), connection indicator means (CON) (e.g., 1, 2),
and message type indication means (NOTIFY) (e.g., pager (P), voice (V), facsimile
(F), data (D)). (Id. at 5:36-50 (shows an exemplary sensor configuration), 13:57-
14:15, Fig. 8C (EX1004)). (Franzon 63 (EX1002)).
29
Patent 9,280,886
3. Reasons to Combine Handley and Pacheco
Handley and Pacheco both disclose an alarm or security system using a
device that monitors sensors to detect for alarm conditions and reports detected
alarm conditions to a remote device. (Handley at 2:55-3:10, Fig. 1 (EX1003);
Pacheco at 4:30-31, 4:65-5:3, Fig. 1 (EX1004); Franzon 64 (EX1002)).
Handley discloses the use of multiple sensors and different types of sensors,
including temperature sensors, motion detectors, door contacts, glass break
detectors, shock sensors, fire detectors, and water detectors. (Handley at 2:62-65,
3:51-52 (EX1003)). Handley also describes the importance of using these sensors
in many different applications to monitor and report alarm conditions so that
appropriate action can be taken. For example, Handley describes how temperature
sensors are used in applications such as cold rooms (e.g., refrigerators), storage
30
Patent 9,280,886
areas (e.g., freezers), and greenhouses, where it is necessary to monitor the
temperature within a space. (Id. at 1:13-52 (EX1003)). Handley further describes
that upon detecting certain alarm conditions (e.g., where the sensed temperature
exceeds certain ALARM thresholds), the alarm conditions are reported to a
remote monitoring station, indicating that a service call is required. (Id. at 4:47-
5:8, 6:33-38, Figs. 2-3 (EX1003)). (Franzon 65 (EX1002)).
Pacheco similarly discloses the use of multiple sensors and different types of
sensors, including switches, motion detectors, keypads, temperature sensors, or
other commercially available type of sensors. (Pacheco at 1:27-30, 5:19-50
(EX1004)). Pacheco describes commercially available alarm notification systems
(Id. at 1:33-43 (EX1004)). Pacheco recognized that these prior art systems were
limited in the amount of specific alarm notification information that was conveyed
to the remote monitoring stations which, in turn, constrained the ability of those
stations to properly respond to the alarm information. (Id. at 1:45-2:8 (EX1004)).
Accordingly, Pacheco addresses these limitations by providing an improved
computer-based notification system for reporting the occurrence of events within a
monitored structure which is capable of providing enhanced information regarding
the nature of alarm conditions detected by each sensor included as part of the
notification system. (Id. at 2:10-16 (EX1004)). (Franzon 66-67 (EX1002)).
31
Patent 9,280,886
It would have been obvious to a person of ordinary skill in the art, and such
a person would have been motivated, to have combined the computer-based
notification system of Pacheco, with the alarm/security system of Handley at least
because of the benefits of providing such a notification system and because such a
combination would have a reasonable likelihood of success. (Franzon 68
(EX1002)). More particularly, it would have been obvious to such a person to
have combined the transmission of specific alarm notification information to, and
the display of such information at, a remote computer system, as taught in
Pacheco, with an alarm system that transmits alarm notification information over a
network to a remote monitoring station, as taught in Handley. (Id. (EX1002)).
Given the similarities in structure and operation between Handley and Pacheco,
one of ordinary skill, who was familiar with Handley and then read Pacheco,
would have been motivated to improve Handleys system by using Pachecos
computer-based notification system. (Id. (EX1002)). Handley discloses reporting
alarm information to a remote monitoring station, which can trigger a service call
to be made. (Handley at 3:2-3, 4:66-5:3 (EX1003)). Pacheco discloses not only
that it is advantageous to provide more specific alarm notification information, but
also how to implement it in a system. (Franzon 68 (EX1002)). Pacheco is
motivated to reduce the false alarm rate (Pacheco at 2:25-3:8 (EX1004)).
Combining the computer-based notification system of Pacheco with the
32
Patent 9,280,886
alarm/security system of Handley would permit a practitioner of Handley to enjoy
this benefit. (Franzon 68 (EX1002)). For example, Handley anticipates service
calls arising from alarm information transmitted to the remote monitoring station.
(Handley at 4:66-5:5 (EX1003)). Pacheco is motivated to reduce the false alarm
rate for similar reasons to prevent the dispatch of an emergency vehicle
(Pacheco at 1:38-43 (EX1004)). Furthermore, doing so would provide the remote
monitoring station of Handley with more specific alarm notification information,
such as an identification of the relevant structure, circuit monitoring device, sensor,
location, sensor type, state of the sensor, which would then allow personnel at the
remote monitoring station to provide a better, targeted response based on this
information. (Franzon 68 (EX1002)). Modifying Handleys alarm system to
implement the computer-based notification system of Pacheco was well within the
abilities of one of ordinary skill in the art, would have been obvious to try, would
have involved combining known elements in a known way to obtain predictable
results, and would have been accomplished with a reasonable chance of success.
(Id. (EX1002)). Alarm information is transmitted in both cases, and the alarm
information of Pacheco could easily have been displayed on Handleys remote
monitoring station. (Id. (EX1002)).
33
Patent 9,280,886
4. Claim 1
a) 1[P] A circuit monitoring device for monitoring

individual circuits having at least one field device which
is configured to provide a measured electrical
parameter of a circuit
To the extent the preamble is limiting, Handley and Pacheco each teaches
the preamble.
Figure 1 of Handley shows a security or alarm system having an alarm
control panel 10 and keyboard controller 20 (the combination of elements 10 and
20, or alternatively element 20, can be the circuit monitoring device) for
monitoring multiple detection devices or sensors 12 and a temperature sensor 32
(individual circuits having at least one field device). (Handley at 2:58-3:16,
5:49-63, Fig. 1 (EX1003)).
34
Patent 9,280,886
The sensors 12 and temperature sensor 32 are configured to provide a
measured electrical parameter of a circuit. For example, the sensors 12 are
utilized for monitoring a zone or area of protection, are connected to the control
panel in a typical manner, and may be any of the commonly utilized sensors such
as motion detectors, door contacts, glass break detectors, shock sensors, fire
detectors, water detectors, etc. (Id. at 2:60-65 (EX1003)). In addition, the
temperature sensor 32 is provided with a temperature sensing means which
provides an output which varies in proportion to the temperature sensedthe
temperature sensing means can be a resistive sensor, a thermocouple that outputs
voltage or a temperature sensor IC that outputs voltage or current, and can output
an analog or a digital signal. (Id. at 3:56-4:40 (EX1003)).
Figure 1 of Pacheco shows a notification system having an alarm interface
26 (circuit monitoring device) for monitoring multiple sensors 28 and/or a
remote unit 32 (which may be configured as a sensor) via a remote unit interface
30 (individual circuits having at least one field device). (Pacheco at 4:31-33,
4:65-5:18, Fig. 1 (EX1004)).
35
Patent 9,280,886
The sensors 28 and/or remote unit 32 are configured to provide a measured
electrical parameter of a circuit. (Id. at 4:66-67, 5:19-29, 6:16-22, 6:51-67
(EX1004)). (See generally Franzon 69-73 (EX1002)).
b) 1[A] a processor, having a memory and an input

electrically coupled to the circuit which is configured to
receive the measured electrical parameter of the circuit,
and modules comprising software to configure the
processor, the modules including:
Handley teaches, with the knowledge of a person of ordinary skill in the art,
this limitation. Figure 1 of Handley shows that the keyboard controller 20 includes
a processing means 28 (processor) having a memory and an input electrically
coupled to the temperature sensor 32 (circuit) which is configured to receive the
output voltage or current (measured electrical parameter) of the temperature
sensor 32. (Handley at 3:51-4:40, Fig. 1 (EX1003)). Figure 1 also shows that the
keyboard controller 20 includes a non-volatile memory 30 (memory) for storing
instructions [or routines] for the processing means 28. (Id. at 3:48-51, 8:1-4, Fig.
1 (EX1003)). A person of ordinary skill in the art would have understood, or at
36
Patent 9,280,886
least would have found obvious, that the stored instructions (or routines) are pieces
of software (or source code) that tell the processing means what instructions to
perform, including how to receive and process the data from the sensor. (Franzon
74 (EX1002)). Accordingly, such a person would have understood, or at least
would have found obvious, that these stored instructions are arranged as modules
comprising software to configure the processor. (Id. (EX1002)). (See generally
Franzon 74 (EX1002)).
c) 1[B] a comparison module configured to: compare a

digital value, which corresponds to a magnitude of the
measured electrical parameter, to at least one threshold
value stored in the memory, wherein the threshold value
defines at least one range of digital values, and assign a
status based on the digital value being within the
particular range defined by the threshold value;
Handley teaches the corresponding function and structure for this means-
plus-function limitation as described in section VI.A.1 (Claim Construction).
Function: First, Handley teaches the function of compar[ing] a digital
value, which corresponds to a magnitude of the measured electrical parameter, to
at least one threshold value stored in the memory, wherein the threshold value
defines at least one range of digital values. As shown and described with
Figure 1, Handley teaches that the processing means 28 can receive the output
voltage or current from the temperature sensor 32 as a digital signal (a digital
value, which corresponds to a magnitude of the measured electrical parameter).
37
Patent 9,280,886
(Handley at 3:56-63, 4:4:4-25, Fig. 1 (EX1003)). The processing means 28 then
compares the digital signal to one or more set points or thresholds (e.g., ALARM
1-3 thresholds, RESTORE 1-3 thresholds) (at least one threshold value) stored in
the non-volatile memory 30 (memory). (Id. at 3:48-56 (non-volatile memory
30for storing various parameters for the operation of the system), 4:47-5:48
(describing the set points or thresholds), 7:64-8:1 (value of the set point stored in
the memory), Figs. 2-3 (EX1003)). Figure 2 of Handley shows that each set point
or threshold defines at least one range of digital values. (Id. at 4:47-5:19, Fig. 2
(EX1003)).
(See also id. at 5:34-48 (Once acquired, the temperature is compared against
ALARM 3 and RESTORE 3 thresholds to determine whether it falls above, below,
or within this range Once the appropriate action has been taken or if any of the
38
Patent 9,280,886
above conditions are not met, the same tests are performed for the ALARM 2 and
ALARM 1 ranges.), Fig. 3 (EX1001)). (Franzon 76 (EX1002)).
Second, Handley also teaches the function of assign[ing] a status based on
the digital value being within the particular range defined by the threshold value.
More particularly, Figures 2-3 of Handley show that the processing means 28
assigns a condition based on whether the digital signal is within the particular
range defined by the set points or thresholds. (Id. at 4:47-5:48, Figs. 2-3
(EX1003)). For example, being below the ALARM 1 threshold may indicate a
normal condition; exceeding the ALARM 1 threshold may signal a local trouble
condition; exceeding the ALARM 2 threshold may signal an alarm and initiate
an alarm transmission to a remote monitoring station; and exceeding the ALARM
3 threshold may activate a back-up cooling system. (Id. (EX1003)). And once
the ALARM thresholds have been exceeded, various RESTORE thresholds are
used to deactivate or clear the corresponding alarm condition. (Id. (EX1003)).
(Franzon 77 (EX1002)).
Structure: Handley teaches the corresponding structure or its equivalent.
As described above, in one example, Figures 2-3 of Handley show that the
processing means 28 (Handley at 3:42-44, Fig. 1 (EX1003)) is programmed to
perform the following steps when the temperature is rising:
39
Patent 9,280,886
(1) compare the digital signal to at least one set point or threshold (e.g.,
ALARM 2 threshold) (id. at 4:57-62, Figs. 2-3 (EX1003)),
(2) if the digital signal is below the threshold that falls within a first range of
digital values (e.g., between the ALARM 1 and 2 thresholds), assign only a first
condition (e.g., ALARM 1 that may signal a local trouble condition) to the
circuit (e.g., temperature sensor 32) (id. at 4:57-5:3, 5:27-33, Figs. 2-3 (EX1003)),
and
(3) if the digital signal is above the threshold value that falls within a second
range of digital values (e.g., above the ALARM 2 threshold), assign a second
condition (e.g., ALARM 2 that may signal an alarm and initiate an alarm
transmission to a remote monitoring station) to the circuit (id. (EX1003)).
As another example, Figures 2-3 of Handley show that the processing means
28 (Handley at 3:42-44, Fig. 1 (EX1003) is also programmed to perform the
following steps when the temperature is falling:
(1) compare the digital signal to at least one set point or threshold (e.g.,
ALARM 2 and RESTORE 2 thresholds) (id. at 5:9-20, 5:27-33, Figs. 2-3
(EX1003)),
(2) if the digital signal is below the threshold that falls within a first range of
digital values (e.g., between the lower bound and RESTORE 2 threshold), assign a
40
Patent 9,280,886
first condition (e.g., deactivate or clear the ALARM 2 condition) to the circuit
(e.g., temperature sensor 32) (id. at 5:9-20, 5:27-33, Figs. 2-3 (EX1003)), and
(3) if the digital signal is above the threshold value that falls within a second
range of digital values (e.g., between the ALARM 2 threshold and upper bound),
assign a second condition (e.g., set the ALARM 2 condition) to the circuit (id.
(EX1003)). (See Franzon 78-79 (EX1002)).
d) 1[C] a communication module configured to generate

a status signal including at least the assigned status;
and
The combination of Handley and Pacheco teaches the corresponding
function and structure for this means-plus-function limitation as described in
section VI.A.2 (Claim Construction).
Handley
Function: Handley teaches that the processing means 28 uses individual
flags to track the current state of each alarm level. (Handley at 5:27-33, Fig. 3
(EX1003)). Handley also teaches that when one or more thresholds is exceeded
(e.g., ALARM 1 threshold, ALARM 2 threshold), the processing means 28 may
report the alarm condition to the remote monitoring station 14. (Id. at 4:53-57,
4:59-61, 4:66-5:3, 6:34-38, Fig. 2 (EX1003)). A person of ordinary skill in the art
would have understood, or at least would have found obvious, that for the
processing means 28 to report the alarm condition to the remote monitoring station
41
Patent 9,280,886
14, the processing means 28 produces a status signal indicating the alarm condition
so that appropriate action can be taken. (Franzon 81 (EX1002)).
Structure: As described above, Figure 3 of Handley shows that the
processing means 28 (Handley at 3:42-44, Fig. 1 (EX1003) is programmed to
perform the following steps:
(1) if a first condition (e.g., ALARM 1 that may signal a local trouble
condition) is assigned to the circuit (e.g., temperature sensor 32), set a first flag
(e.g., ALARM 1 flag) (id. at 4:57-5:3, 5:27-33, Fig. 3 (EX1003)), and
(2) if a second condition (e.g., ALARM 2 that may signal an alarm and
initiate an alarm transmission to a remote monitoring station) is assigned to the
circuit, set a second flag (e.g., ALARM 2 flag) (id. (EX1003)). (Franzon 82
(EX1002)).
As described above, a person of ordinary skill in the art would have
understood, or at least would have found obvious, that Handley also teaches that
the processing means 28 produces a status signal indicating the alarm condition for
transmission to the remote monitoring station 14 so that appropriate action can be
taken. (Id. at 4:53-57, 4:59-61, 4:66-5:3, 6:34-38 (EX1003); Franzon 83
(EX1002)). Accordingly, such a person would have understood that Handley
discloses the corresponding structure or its equivalent. (Franzon 83 (EX1002)).
Pacheco
42
Patent 9,280,886
Function: Pacheco teaches the function of generat[ing] a status signal
including at least the assigned status. Figures 1-2 of Pacheco teach that the alarm
interface 26 includes a microprocessor 44 that collects data for transfer to the
computer system 12. (Pacheco at 6:45-47, Figs. 1-2 (EX1004)). In particular,
Pacheco teaches that the microprocessor 44 receives information (e.g., sensor
value) from the sensor 28, determines the state of the sensor 28 by compar[ing]
the value to the preselected threshold value and determin[ing] whether the received
value is above or below the preselected threshold value, and assigns a state
(status) based on whether the information is within the particular range defined
by the preselected threshold value. (Pacheco at 4:66-5:3, 6:51-67, Fig. 3
(EX1004)). The state is represented as a single bitlogical 0 (or low) or logical 1
(or high) and is stored in a single bit block for a corresponding sensor in the first
(or level) register 46. (Id. at 6:47-51, 6:59-61, 7:1-2, Figs. 1, 3, 8C (EX1004)).
(Franzon 84 (EX1002)).
Figure 1 of Pacheco shows that the computer system 12 is coupled to a
video monitor 14. (Id. at 4:31-41, Fig. 1 (EX1004)). Figure 8C of Pacheco further
shows a sensor function GUI that can be displayed on the video monitor 14 and
provide user access to the sensor function. (Id. at 13:51-53, Fig. 8C (EX1004)).
43
Patent 9,280,886
The GUI includes an information block (element 266) that identifies, for each
sensor, the sensor (SEN) number (e.g., 0001, 002), location (e.g., front door, back
door), sensor type (e.g., keypad, switch, motion, temperature), and status (e.g.,
high, low), among other information. (Id. at 5:36-50, 13:57-14:15, Fig. 8C
(EX1004)). Because the GUI displays the status of each sensor, a person of
ordinary skill in the art would have understood, or at least would have found
obvious, that the microprocessor 44 generates a status signal including at least the
assigned status for transfer to the computer system 12 for display on the video
monitor 14. (Franzon 85 (EX1002)). Since the microprocessor 44 stores the
state for each sensor in the level register 46 and when the sensor state changes
sets a corresponding flag bit of the status register (Pacheco at 7:1-18 (EX1004)),
one of ordinary skill of the art would have understood, or at least would have
44
Patent 9,280,886
found obvious, that it is at least this status that was transferred to the computer
system for display on the video monitor 14. (Franzon 85 (EX1002)).
Structure: As described above, Pacheco teaches that the microprocessor 44
(Pacheco at 6:47-7:4, Figs. 1-2 (EX1004)) is programmed to perform the following
steps:
(1) if a first condition (e.g., information is below the preselected threshold
value) is assigned to the circuit (e.g., sensor 28), sets a corresponding single bit
block to a first state (e.g., logical 0 (or low)) (id. (EX1004)),
(2) if a second condition (e.g., information is below the preselected threshold
value) is assigned to the circuit, sets the corresponding single bit block to a second
state (e.g., logical 1 (or high)) (id. (EX1004)), and
(3) produces a status signal that includes the state of the corresponding
single bit block (id. at 4:66-5:3, 5:36-50, 6:47-7:4, 13:57-14:15, Figs. 1, 3, 8C
(EX1004)). (Franzon 86 (EX1002)).
To the extent Handley does not expressly disclose generating the status
signal of the corresponding function or a processor programmed to perform the
third step ((3) produce a status signal that includes at least the first flag (or bit)
second flag (or bit)) of the corresponding structure, the combination of Handley
and Pacheco discloses the corresponding function and structure. A person of
ordinary skill in the art would have been motivated to combine the disclosure of
45
Patent 9,280,886
producing a status signal, as in Pacheco, using the multiple ALARM flags each
associated with a different ALARM threshold, as in Handley, to provide specific
alarm notification information so that personnel at the remote monitoring station
can identify the particular alarm condition and take appropriate action as
necessary. Pacheco discloses using multiple bitsone bit for each sensor, which
can be of different types. A person of ordinary skill would have contemplated
trying, and found it obvious to try, using sensors, including temperature sensors, to
detect for multiple alarm conditions and to have those multiple conditions
represented using multiple bits. (Franzon 87 (EX1002); see Section VII.A.3
(Reason to Combine)).
e) 1[D] a transmitter configured to transmit the status

signal to a remote computing system over a network for
output, by the remote computing system, of the status.
The combination of Handley and Pacheco teaches, with the knowledge of a
person of ordinary skill in the art, this limitation.
Figure 1 of Handley shows that the keypad controller 20 interfaces with the
alarm control panel 10 via a system input/output (I/O) interface 22, and that the
alarm control panel 10 can transmit an alarm condition to the remote monitoring
station 14 utilizing any of the commonly employed methods of communication
such as utilizing a telephone dialer sending messages to the remote monitoring
station 14 using local telephone systems 16, utilizing cellular telephone
46
Patent 9,280,886
technology or other means of wireless communication, or utilizing other
communication arrangements such as two way cable systems (over a network)
(Handley at 3:2-12, 4:53-57, 4:57-62, 4:66-5:3, Fig. 1 (EX1003)). A person of
ordinary skill in the art would have understood, or at least would have found
obvious, that for the keypad controller 20 and alarm control panel 10 to report the
alarm condition to the remote monitoring station 14 over these communication
methods, they include a transmitter to transmit a status signal indicating the alarm
condition so that appropriate action can be taken. (Franzon 89 (EX1002)). Such
a person would also have understood, or at least would have found obvious, that
for the remote monitoring station 14 to take appropriate action based on an alarm
condition, the remote monitoring station 14 must have a display to output the alarm
condition. (Id. 89 (EX1002)).
As described in section VII.A.4.d (claim 1[C]), Pacheco teaches that the
alarm interface 26, which includes microprocessor 44, generates a status signal
including at least the assigned status for transfer to the computer system 12 for
display on the video monitor 14 (remote computing system, which includes
elements 12 and 14). (Pacheco at 4:31-41, 5:36-50, 6:47-7:4, 13:57-14:15, Figs. 1,
3, 8C (EX1004)). Figure 2 of Pacheco shows that the alarm interface 26 is
connected to the computer system 12 by a two-wire cable 27 interconnected
between a serial port of the computer system 12 and the RS 485 interface 52 of the
47
Patent 9,280,886
systemboard 4. (Id. at 6:33-36, Fig. 2 (EX1004)). A person of ordinary skill in
the art would have understood, or at least would have found obvious, that the RS
485 interface 52 must have a transmitter configured to transmit the status signal to
the computer system 12 for output, by the video monitor 14 coupled to the
computer system 12, of the status. (Franzon 90 (EX1002)).
A person of ordinary skill in the art would have been motivated to combine
the disclosure of transmitting the status signal for output by the remote computer
system, as in Pacheco, with the networked alarm system, as in Handley, to provide
specific alarm notification information so that personnel at the remote monitoring
station can identify the particular alarm condition and take appropriate action as
necessary. (Franzon 91 (EX1002); see Section VII.A.3 (Reasons to Combine)).
5. Claim 2
a) The device of claim 1, wherein the remote computing

system is a centralized monitoring system, and wherein
the status signal enables the display of an indication of
a specified condition of the circuit which corresponds to
the assigned status
The combination of Handley and Pacheco teaches claim 2. The 886 patent
discloses that a centralised SMS control unit communicates with multiple circuit
monitoring devices. (886 patent at 5:5-8, Fig. 2 (EX1001)). As described above
in section VII.A.4.e (claim 1[D]), the combination teaches the remote computing
system. The combination further teaches that this system can be a centralized
48
Patent 9,280,886
monitoring system that communicates with multiple circuit monitoring devices.
(See, e.g., Handley at 3:2-12, 4:66-5:3 (EX1003); Pacheco at Abstract, 1:33-43,
4:32-34, 11:9-25 (EX1004)). As described in section VII.B.3.d (claim 29[C]), the
combination teaches that the status signal enables the display of an indication of a
specified condition of the circuit which corresponds to the assigned status (e.g., as
shown and described in connection with Figure 8C of Pacheco). A person of
ordinary skill in the art would have been motivated to combine Handley and
Pacheco for the reasons described above in section VII.A.3. (Franzon 92
(EX1002)).
6. Claim 4
a) The device of claim 1, wherein the transmitter is

configured to transmit signals to the remote computing
system and receive signals from the remote computing
system over a network according to one or more
communication protocols.
The combination of Handley and Pacheco teaches claim 4. As described
above in section VII.A.4.e (claim 1[D]), the combination teaches that the
transmitter is configured to transmit signals to, and receive signals from, the
remote computing system using a wired (two way cable) or wireless system over a
network according to wired or wireless communications (according to one or
more communication protocols). (See, e.g., Handley at 3:2-12, Fig. 1 (EX1003);
Pacheco at 6:33-36, Fig. 2 (EX1004))). A person of ordinary skill in the art would
49
Patent 9,280,886
have been motivated to combine Handley and Pacheco for the reasons described
above in section VII.A.3. (Franzon 93 (EX1002)).
7. Claim 5
a) The device of claim 1, wherein the communication

module is further configured to generate an
identification of the circuit monitoring device.
For the same reasons described in section VII.B.3.c (claim 29[B]), the
combination of Handley and Pacheco teaches claim 5. (Franzon 94 (EX1002)).
8. Claim 6
a) The device of claim 5, wherein the generated status

signal is configured to cause the remote computing
system to present an indication of the assigned status
and the identification of the circuit monitoring device.
For the same reasons described in section VII.B.3.d (claim 29[C]), the
combination of Handley and Pacheco teaches claim 6. (Franzon 95 (EX1002)).
9. Claim 9
a) The device of claim 1, wherein the measured electrical

parameter provided by the field device represents a
specified condition of the circuit detected by the field
device.
For the same reasons described in sections VII.A.4.a and VII.A.4.c (claims
1[P], 1[B]), Handley teaches claim 9. (Franzon 96 (EX1002)).
10. Claim 10
a) The device of claim 1, wherein the field device is one

or more of: a motion detector, a switch, a smoke
detector, a heat detector and a tamper switch.
50
Patent 9,280,886
Handley and Pacheco each teaches claim 10. Handley discloses that the
sensors (field device) can include temperature sensors, motion detectors, door
contacts, glass break detectors, shock sensors, fire detectors, water detectors, etc.
(Handley at 2:62-65, 3:51-53 (EX1003)). Pacheco also discloses that the sensors
(field device) can include switches, motion detectors, keypads, temperature
sensors, or other commercially available type of sensors. (Pacheco at 5:19-50
(EX1004)). (Franzon 97 (EX1002)).
11. Claim 38
a) The device of claim 1, wherein the memory stores a

plurality of threshold values that each define a
respective plurality of ranges of digital values, wherein
each range corresponds to a respective one of a
plurality of discrete conditions of the circuit including a
normal condition and at least one alarm condition.
Handley teaches claim 38. Handley teaches that the non-volatile memory 3
(memory) can store a plurality of set points or thresholds (e.g., ALARM 1-3,
RESTORE 1-3 thresholds) (a plurality of threshold values). (Handley at 3:48-
56, 4:47-5:48, 7:64-8:1, Figs. 1-3 (EX1003)). For example, Figures 2-3 of
Handley show that each threshold defines a respective plurality of ranges of digital
values, and each range corresponds to a respective one of a plurality of discrete
conditions of the circuit including a normal condition and at least one alarm
condition:
51
Patent 9,280,886
Range #1: Between a lower bound (e.g., x00) and ALARM 1
thresholdmay signal no alarm (normal condition)
Range #2: Above ALARM 1 threshold (to an upper bound)may
signal a local trouble condition and has an ALARM 1 flag set (at least
one alarm condition)
Range #3: Above ALARM 2 threshold (to an upper bound)may
signal an alarm and initiate an alarm transmission to a remote
monitoring station and has an ALARM 2 flag set (at least one alarm
condition)
Range #4: Between ALARM 3 threshold and upper bound (e.g., xFF)
may activate a back-up cooling system and has an ALARM 3 flag set
(at least one alarm condition)
(Id. at 4:47-5:3, 5:27-33, Figs. 2-3 (EX1003)). (See also Sections VII.A.4.c-d
(claims 1[B]-1[C]); Franzon 98 (EX1002)).
12. Claim 39
a) The device of claim 1, wherein the memory stores a

plurality of threshold values that each define at least
three ranges of digital values that respectively
correspond to at least three discrete conditions of the
circuit.
For the same reasons described in section VII.A.11 (claim 38), Handley
teaches claim 39. (Franzon 99 (EX1002)).
52
Patent 9,280,886
13. Claim 40
a) The device of claim 39, wherein the at least three

discrete conditions of the circuit include a normal
condition and at least two different alarm conditions,
and wherein the status is a discrete indication of which
of the at least three conditions to which the measured
parameter corresponds.
14. Claim 41
a) The device of claim 1, wherein the field device is

configured to provide the measured electrical parameter
by altering the measured electrical parameter of the
circuit.
Handley teaches claim 41. Handley teaches that the output voltage or
current (measured electrical parameter) from the temperature sensor 32 (field
device) can change and be sent to an internal comparator or signal conditioning
means that can include an A/D converter (circuitry that can alter[] the measured
electrical parameter of the circuit), and whose output is coupled to the input of the
processing means 28. (Handley at 4:6-8, 4:13-25, 4:26-30 (EX1003)). (Franzon
101 (EX1002)).
15. Claim 42
a) The device of claim 1, wherein the field device is

configured to provide the measured electrical parameter
as an altered measured electrical parameter of the
circuit, wherein the processor receives the altered,
measured electrical parameter and wherein the
53
Patent 9,280,886
comparison module compares the digital value which

corresponds to the magnitude of the altered, measured
electrical parameter.
Handley teaches claim 42. As described above in section VII.A.14 (claim
41), Handley discloses that the field device is configured to provide the measured
electrical parameter as an altered measured electrical parameter of the circuit. For
the same reasons described in sections VII.A.4.b-c and VII.A.14 (claims 1[A]-
1[B], 41), Handley discloses the claimed function of the processor and comparison
module using the altered measured electrical parameter. (Franzon 102
(EX1002)).
16. Claim 51
a) The system of claim 1, wherein the field device is

configured to provide the measurable electrical
parameter by altering the measurable electrical
parameter of the circuit.
54
Patent 9,280,886
B. Ground II: Claims 29, 35, 37, 52-54 are rendered obvious by
Handley in view of Pacheco, Castleman, and Ruckley6
Handley, Pacheco, Castleman, and Ruckley are not of record in the 886
patent. An overview of Handley is described in section VII.A.1. An overview of
Pacheco is described in section VII.A.2. The reasons and motivation to combine
Handley and Pacheco is described in section VII.A.3. The reasons and motivation
to combine these references with Castleman and Ruckley are discussed below in
the discussion of the relevant claim limitations.
1. Overview of Castleman
Castleman is directed to a process and system for detecting a spark, flame,
or fire with increased sensitivity, faster processing and response times, intelligence
for discriminating against false alarms, and selective actuation of multi-stage alarm
relays. (Castleman at 1:16-21 (EX1005)).
Figure 12 shows a flame/fire detection system having a flame detector
(element 32 shown in blue) that includes multiple sensors (elements 40, 42, 44,
52 in green), an A/D converter (element 50 in brown), and a microprocessor
(element 36 in orange), among other components. (Id. at 6:16-20, 15:7-35, Fig.
12 (EX1005)). The A/D converter receives a continuous stream of analog sensor
6
Castleman and Ruckley are used to teach the corresponding structure for the
means-plus-function limitations of claim 29.
55
Patent 9,280,886
signals from the sensors and converts them into digital signals for processing by
the microprocessor. (Id. at 10:16-22, 15:16-22, 31:37-42, Fig. 12 (EX1005)). The
microprocessor processes all the sensor digital data to determine the nature of the
prevailing condition and triggers an appropriate one of the multistage (e.g., two- or
three-stage) alarm unit 56. (Id. at 31:37-42 (EX1005)).
56
Patent 9,280,886
Figure 34 shows a circuit for processing a sensor input signal from sensor
502 that includes three operational amplifiers (elements 505, 506, 507 in red) and
outputs sensor signals. (Id. at 20:45-66, Fig. 34 (EX1005)).
The sensor signals output from the circuit of Figure 34 are fed as inputs to
the A/D converters (elements 305, 306, 307 in brown) in the circuit in Figure 28.
(Id. at 20:45-21:43, Figs. 28, 34 (EX1005)).
57
Patent 9,280,886
(See generally Franzon 104-107 (EX1002)).
2. Overview of Ruckley
Ruckley is directed to electrical relays and more specifically to integrated
solid state relays that are network controlled and therefore have network
addresses. (Ruckley at 1:5-7 (EX1006)). Relays are universally used to control
one load in response to one control line, and can be used, for example, for
monitoring alarms and temperature controlling and or monitoring. (Id. at 1:9-
10, 6:23-29 (EX1006)).
Ruckley recognized the need for industry standards, including DeviceNetTM,
to allow devices from different manufacturers to work together in the same
network. (Id. at 1:43-54 (EX1006)). Ruckley describes a preference to use, and
the advantages of using, certain networks including DeviceNetTM. (Id. at 2:9-26,
58
Patent 9,280,886
3:1-14, 5:7-51, 12:27-35, Figs. 2, 5 (EX1006)). (See generally Franzon 108-109
(EX1002)).
3. Claim 29
a) 29[P] An apparatus for monitoring a circuit and for

coupling to a central system
To the extent the preamble is limiting, Handley and Pacheco each teaches
the preamble.
Figure 1 of Handley shows a security or alarm system having an alarm
control panel 10 and keyboard controller 20 (the combination of elements 10 and
20, or alternatively element 20, can be the apparatus) for monitoring multiple
detection devices or sensors 12 and a temperature sensor 32 (each can be a
circuit). (Handley at 2:58-3:16, 5:49-63, Fig. 1 (EX1003)). Figure 1 also shows
that the keypad controller 20 interfaces with the alarm control panel 10 via a
system input/output (I/O) interface 22, and that the alarm control panel 10 is
coupled to a remote monitoring station 14 (central system). (Id. at 3:2-12, 4:53-
57, 4:59-61, 4:66-5:3, Fig. 1 (EX1003)).
59
Patent 9,280,886
Figure 1 of Pacheco shows a notification system having an alarm interface
26 (apparatus) for monitoring multiple sensors 28 and/or a remote unit 32 (which
may be configured as a sensor) via a remote unit interface 30 (each can be a
circuit). (Pacheco at 4:31-33, 4:65-5:18, Fig. 1 (EX1004)). Figure 1 also shows
that the alarm interface 26 is coupled to a computer system 12 (central system).
(Id. at 4:65-66, 6:33-36, Fig. 1 (EX1004)).
60
Patent 9,280,886
(See also Section VII.A.5 (claim 2) (centralized monitoring system); see
b) 29[A] a circuit monitoring module configured to

receive a parameter of the circuit, to compare the
parameter to at least one threshold value and to assign
a discrete value concerning the circuit based on the
comparison; and
The combination of Handley and Castleman teaches the corresponding
function and structure for this means-plus-function limitation as described in
section VI.A.3 (Claim Construction).
Handley
Function: Handley teaches the function of receiv[ing] a parameter of the
circuit, compar[ing] the parameter to at least one threshold value and assign[ing] a
discrete value concerning the circuit based on the comparison. More particularly,
Handley teaches that sensors 12 and temperature sensor 32 are configured to
provide a parameter of the circuit. For example, the sensors 12 are utilized for
monitoring a zone or area of protection, are connected to the control panel in a
typical manner, and may be any of the commonly utilized sensors such as
motion detectors, door contacts, glass break detectors, shock sensors, fire detectors,
water detectors, etc. (Handley at 2:60-65, Fig. 1 (EX1003)). In addition, the
temperature sensor 32 is provided with a temperature sensing means which
provides an output which varies in proportion to the temperature sensedthe
61
Patent 9,280,886
temperature sensing means can be a resistive sensor, a thermocouple that outputs
voltage or a temperature sensor IC that outputs voltage or current, and can output
an analog or a digital signal (parameter of the circuit). (Id. at 3:56-4:40, Fig. 1
(EX1003)).
Handley teaches that the processing means 28 can receive the output voltage
or current from the temperature sensor 32 as a digital signal. (Id. at 3:56-63, 4:4-
25, Fig. 1 (EX1003)). The processing means 28 then compares the digital signal to
one or more set points or thresholds (e.g., ALARM 1-3 thresholds, RESTORE 1-3
thresholds) (at least one threshold value). (Id. at 4:47-5:48, Figs. 2-3
(EX1003)).
The processing means 28 then assigns a discrete value concerning the circuit based
on the comparison. For example, the processing means 28 uses flags that are either
62
Patent 9,280,886
set or not set to track the current state of each of the alarm levels. (Id. at 5:27-33,
Fig. 3 (EX1003)). If the digital signal exceeds the ALARM 1 threshold, this may
signal a local trouble condition and the processing means 28 sets an ALARM 1
flag; if the digital signal exceeds the ALARM 2 threshold, this may signal an
alarm and initiate an alarm transmission to a remote monitoring station and the
processing means 28 sets an ALARM 2 flag; and if the digital signal exceeds the
ALARM 3 threshold, this may activate a back-up cooling system and the
processing means 28 sets an ALARM 3 flag. (Id. at 4:57-5:3, 5:27-33, Figs. 2-3
(EX1003)). And once the ALARM thresholds have been exceeded, various
RESTORE thresholds are used to deactivate or clear the corresponding alarm
condition. (Id. (EX1003)). (See generally Franzon 114-115 (EX1002)).
Structure: As described above, Handley teaches that the output voltage or
current from the temperature sensor 32 can be sent to a signal conditioning means
that can include an A/D converter whose output is coupled to the input of the
processing means 28 (microprocessor). (Handley at 4:6-8, 4:13-25 (Such signal
conditioning means may include an A/D converter to convert the output voltage or
current into a digital word which can be used by the processing means to compare
against the threshold value.), 4:26-30 (EX1003)).
Handley also teaches that the processing means 28 (Handley at 3:42-44, Fig.
1 (EX1003)) is programmed to perform the following steps:
63
Patent 9,280,886
(1) receive a digital value from the A/D converter (id. at 4:13-25 (EX1003)),
(2)-(4) As described above in section VII.A.4.c (claim 1[B]), Handley
discloses that the processing means 28 is programmed to perform three additional
steps (a comparing step and two assigning steps) when the temperature is rising
and/or when the temperature is falling. (See generally Franzon 116-117
(EX1002)).
Castleman
Structure: Figures 12, 28, and 34 of Castleman show a flame detector
(element 32 in Figure 12) having an OPAMP (e.g., any of elements 505, 506, 507
in Figure 34), an A/D converter (e.g., element 50 in Figure 12; any of elements
305, 306, 307 in Figure 28), and a microprocessor (e.g., element 36 in Figure 12).
(Castleman at 6:16-20, 10:16-22, 15:7-35, 20:45-66, 21:23-43, 31:37-42, Figs. 12,
28, 34 (EX1005)). The OPAMP, which receives a parameter (e.g., analog sensor
signals) of the circuit (e.g., any of sensors 40, 42, 44, 52 in Figure 12; sensor 502
in Figure 34) has an output that is coupled to the input of the A/D converter. The
A/D converter has an output that is coupled to the input of the microprocessor. (Id.
(EX1005)). (See Franzon 118 (EX1002)).
As described above, Handley discloses the corresponding function and the
part of the corresponding structure that requires the signal conditioning means
having an A/D converter and the processor programmed to perform the four steps.
64
Patent 9,280,886
It would also have been obvious, in view of Handley alone, to provide for the
signaling conditioning means to further include an OPAMP upstream of the A/D
converter as part of the corresponding structure or its equivalent for the reasons
described below. (Franzon 119 (EX1002)). Alternatively, Castleman expressly
teaches this OPAMP. Accordingly, it would have been obvious to a person of
ordinary skill in the art to have combined the structure of the circuit monitoring
module (in particular adding the OPAMP between the sensor and the A/D
converter) of Castleman, with the alarm/security system of Handley. (Franzon
119 (EX1002)). Like Handley, Castleman teaches an alarm system having
similar structure (including a sensor, A/D converter, microprocessor) and
operation. (Cf. Handley at 2:55-3:8, Fig. 1 (EX1003) to Castleman at 10:16-22,
15:16-22, 20:45-66, 21:23-43, 31:37-42, Figs. 12, 28, 34 (EX1005); Franzon 119
(EX1002)). Handley discloses that its alarm system can be used with any
temperature sensing means. (Handley at 3:63-65 (Temperature sensing means
may utilize any of the currently available technologies or any technology
developed in the future.) (EX1003)). Handley further discloses the temperature
sensing elements that provide a resistance, voltage or current output require
signal conditioning to provide an appropriate signal to the processing means,
which can include an A/D converter. (Id. at 4:1325 (EX1003)). Castleman
similarly discloses that its alarm system uses temperature sensing elements that
65
Patent 9,280,886
provide a resistance output and thus requires signaling conditioning, which
includes OPAMPs and A/D converters. (Castleman at 20:45-66, 21:23-43, Figs.
28, 34 (EX1005)). Castleman discloses that the OPAMPS amply the sensor
signals and also act as a buffer between the sensor and the A/D converter. (Id.
(EX1005)). (See Franzon 119 (EX1002)).
A person of ordinary skill in the art, in designing the alarm system of
Handley, would have contemplated different circuits to implement signal
conditioning. (Franzon 120 (EX1002)). Such a person would have contemplated
adding an OPAMP between the sensor and the A/D converter, as in Castleman,
because it can improve the functionality of the system by isolating the sensor from
the A/D converter to provide enhanced impedance management. (Id. (EX1002)).
Such a person would have understood that adding the OPAMP was well within the
abilities of one of ordinary skill in the art, would have been obvious to try, would
have involved combining known elements in a known way to obtain predictable
results, and would have been accomplished with a reasonable chance of success.
(Id. (EX1002)).
c) 29[B] a communications module to communicate a

signal indicative of the assigned value and an
identification of the circuit monitoring module to the
central system over a network
66
Patent 9,280,886
The combination of Handley, Pacheco, and Ruckley teaches the
corresponding function and structure for this means-plus-function limitation as
described in section VI.A.4 (Claim Construction).
Handley
Function: As described in section VII.A.4.d (claim 1[C]), Handley teaches
that when one or more thresholds is exceeded (e.g., ALARM 1 threshold and
ALARM 2 threshold), the processing means 28 may report the alarm condition to
the remote monitoring station 14. (Handley at 4:53-57, 4:57-62, 4:66-5:3, 6:33-38
(EX1003)).
Figure 1 of Handley shows that the keypad controller 20, having the
processing means 28, interfaces with the alarm control panel 10 via a system
input/output (I/O) interface 22, and that the alarm control panel 10 can transmit an
alarm condition to the remote monitoring station 14 (central system) utilizing
any of the commonly employed methods of communication such as utilizing a
telephone dialer sending messages to the remote monitoring station 14 using local
telephone systems 16, utilizing cellular telephone technology or other means of
wireless communication, or utilizing other communication arrangements such as
two way cable systems (over a network) (Id. at 3:2-12, 4:53-57, 4:59-61, 4:66-
5:3, Fig. 1 (EX1003)). A person of ordinary skill in the art would have understood,
or at least would have found obvious, that the keypad controller 20 and alarm
67
Patent 9,280,886
control panel 10, in order to report the alarm condition to the remote monitoring
station 14, must communicate a signal indicating the alarm condition and an
identification of the keypad controller 20 and/or alarm control panel 10 so that
appropriate action can be taken (e.g., a service call to the right location). (See
Structure: As described above, Handley teaches that the alarm control
panel 10 can transmit an alarm condition to the remote monitoring station 14 using
any commonly employed communication methods, including a telephone dialer,
cellular telephone technology, other means of wired or wireless communication. A
person of ordinary skill in the art would have understood, or at least found obvious,
that the keypad controller 20 and alarm control panel 10, in order to report the
alarm condition to the remote monitoring station 14 over these communication
methods, must have some structure supporting these communication methods, to
communicate a signal indicating the alarm condition and the identification of the
circuit monitoring module so that appropriate action can be taken (e.g., a service
call to the right location). (Franzon 124 (EX1002)).
Pacheco
Function: As described in section VII.A.4.d (claim 1[C]), Pacheco teaches
that the alarm interface 26 includes microprocessor 44, collects data for transfer
to the computer system 12; more particularly, the microprocessor 44 determines,
68
Patent 9,280,886
assigns, and stores in the level register 46 a single-bit state (assigned value)
based on whether the information (e.g., sensor value) of the sensor 28 is within the
particular range defined by the preselected threshold value. (Pacheco. at 6:45-67,
Figs. 1-3 (EX1004)).
Figure 2 of Pacheco shows that the alarm interface 26 is connected to the
computer system 12 (central system) by a two-wire cable 27 interconnected
between a serial port of the computer system 12 and the RS 485 interface 52 of the
systemboard 4. (Id. at 6:33-36, Fig. 2 (EX1004)). Figure 1 of Pacheco further
shows that the computer system 12 is coupled to a video monitor 14. (Id. at 4:31-
41, Fig. 1 (EX1004)). Figure 8C of Pacheco further shows a sensor function GUI
that can be displayed on the video monitor 14 and provide user access to the sensor
function. (Id. at 13:51-53, Fig. 8C (EX1004)).
69
Patent 9,280,886
The GUI includes an information block (element 266) that identifies, for each
sensor, the sensor (SEN) number (e.g., 0001, 002), location (e.g., front door, back
door), sensor type (e.g., keypad, switch, motion, temperature), and status (e.g.,
high, low), among other information. (Id. at 5:36-50, 13:57-14:15, Fig. 8C
(EX1004)). Because the GUI displays the sensor number, location, and status of
each sensor associated with the alarm interface 26, a person of ordinary skill in the
art would have understood, or at least would have found obvious, that the
microprocessor 44 generates a status signal including at least the assigned value
and an identification of the circuit monitoring module for transfer to the computer
system 12 for display on the video monitor 14. (Franzon 126 (EX1002)). Since
the microprocessor 44 stores the state for each sensor in the level register 46 and
when the sensor state changes sets a corresponding flag bit of the status register
(Pacheco at 7:1-18 (EX1004)), one of ordinary skill of the art would have
understood, or at least would have found obvious, that it is at least this status that
was transferred to the computer system for display on the video monitor 14.
(Franzon 126 (EX1002)). (See generally Franzon 125-126 (EX1002)).
Structure: As described above, Figure 2 of Pacheco shows that the alarm
interface 26 can transmit the status signal to the computer system 12 via the RS
485 interface 52. (Pacheco at 6:33-36, Fig. 2 (EX1004)). (Franzon 127
(EX1002)).
70
Patent 9,280,886
Ruckley
Structure: Ruckley teaches using a DeviceNetTM communication module
implementing the DeviceNetTM communication standard:
FIG. 2 represents an SSR [solid-state relay] 40 . A five-pin

connector 50 is provided on SSR 40 for connection to a network
controller via ubiquitous EIA-type RS-232 or RS-485 interfaces to
networks based on Fieldbus, process field bus (PROFIBUS),
Seriplex, smart distributed system (SDS), DeviceNet, controller area
network (CAN), Foundation Fieldbus, HART, Interbus, LonWorks,
Modbus, P-Net, WorldFip, etc. Each such network mentioned is an
industry standard widely supported with hardware, software, and in
some cases, specialized integrated circuits.
(Ruckley at 3:1-14, Fig 2 (EX1006)). (See Franzon 128 (EX1002)).
As described above, the combination of Handley and Pacheco discloses the
corresponding function. A person of ordinary skill in the art would have been
motivated to combine the disclosure of communicating a signal indicative of the
assigned value and an identification of the circuit monitoring module for output by
the remote computer system, as in Pacheco, with the networked alarm system, as
in Handley, to provide specific alarm notification information so that personnel at
the remote monitoring station can identify the particular alarm condition and take
appropriate action as necessary. (Franzon 129 (EX1002); see Section VII.A.3
(Reasons to Combine)).
71
Patent 9,280,886
To the extent Handley and Pacheco do not expressly disclose the
corresponding structure or its equivalent, the combination of Handley, Pacheco,
and Ruckely discloses the DeviceNetTM communication module implementing the
DeviceNetTM communication standard. It would have been obvious to a person of
ordinary skill in the art to have combined the structure of the communications
module (supporting DeviceNetTM) of Ruckley, with the alarm/security system of
Handley and Pacheco. (Franzon 130 (EX1002)). Like Handley and Pacheco,
Ruckley teaches an apparatus that can be used for monitoring alarms or
temperature controlling and or monitoring. (Cf. Handley at 2:55-3:8, Fig. 1
(EX1004) and Pacheco at 4:65-5:3, Fig. 1 (EX1004) to Ruckley at 1:9-10, 6:23-29
(EX1006); Franzon 130 (EX1002)). Handley discloses that its system can report
alarm information to a remote monitoring station over a networkusing any
commonly employed communication methods, including a telephone dialer,
cellular telephone technology, other means of wired or wireless communication
(over the network). (Handley at 3:2-12, Fig. 1 (EX1003)). Pacheco discloses that
its system can report alarm information to a remote computer system via an RS
485 interface and two-wire cable. (Pacheco at 6:33-36, Fig. 2 (EX1004)).
Ruckley discloses known industry standard topologies and protocols,
including RS-485 (such as disclosed in Pacheco) and DeviceNetTM, and describes a
preference to use, and the advantages of using, certain networks such as
72
Patent 9,280,886
DeviceNetTM. (Ruckley at 2:9-26, 3:1-14, 5:7-51, 12:27-35, Figs. 2, 5 (EX1006)).
In particular, Ruckley teaches that DeviceNetTM advantageously provides a low-
cost communications link to network-connect industrial devices, provides
improved communication between devices as well as importance device-level
diagnostics not easily accessible or available through hardwired I/O interfaces,
has fast response and high reliability, and comes in chip packages with high
temperate rations and high noise immunity. (Id. at 5:7-22 (EX1006)). Ruckley
further teaches the use of a five-pin connector for connection to a network
controller via ubiquitousRS-485 interfaces to networks based onDeviceNet.
Each such network mentioned is an industry standard widely supported with
hardware, software, and in some cases, specialized integrated circuits. (Id. at 3:1-
14 (EX1006)). (Franzon 131 (EX1002)
A person of ordinary skill in the art, in designing the alarm systems of
Handley and Pacheco, would have contemplated different communications
modules for communicating signals to a central system over a network. (Handley
at 3:2-12 (contemplating different methods of communication) (EX1003); Franzon
132 (EX1002)). Such a person would have contemplated using a DeviceNetTM
module, as in Ruckley, because of its many advantages as described above.
(Franzon 132 (EX1002)). In addition, Ruckley expressly teaches using
DevcieNetTM with the same RS-485 interface that is described in Pacheco. (Id.
73
Patent 9,280,886
(EX1002)). Such a person would have understood that using the DeviceNetTM
module was well within the abilities of one of ordinary skill in the art, would have
been obvious to try, would have involved a simple substitution of known elements
in a known way to obtain predictable results, and would have been accomplished
with a reasonable chance of success. (Id. (EX1002)).
d) 29[C] wherein the status communication transmitted

over the network is configured to be presented, by a
remote computing system, as an indication of the
assigned value concerning the circuit and the
identification of the circuit monitoring module
The combination of Handley and Pacheco teaches this limitation.
As described in section VII.B.3.c (claim 29[B]), Handley teaches that when
one or more thresholds is exceeded (e.g., ALARM 1 threshold and ALARM 2
threshold), the processing means 28 may report the alarm condition (status
communication) to the remote monitoring station 14. (Handley at 4:53-57, 4:57-
62, 4:66-5:3, 6:33-38 (EX1003)). Figure 1 of Handley shows that the keypad
controller 20, having the processing means 28, interfaces with the alarm control
panel 10 via a system input/output (I/O) interface 22, and that the alarm control
panel 10 can transmit an alarm condition to the remote monitoring station 14 using
any commonly employed communication methods, including a telephone dialer,
cellular telephone technology, other means of wired or wireless communication
(over the network). (Id. at 3:2-12, 4:53-57, 4:59-61, 4:66-5:3, 6:34-38, Fig. 1
74
Patent 9,280,886
(EX1003)). A person of ordinary skill in the art would have understood, or at least
would have found obvious, that the remote monitoring station 14, in order for
appropriate action to be taken (e.g., a service call to the right location), must have a
computing system with a display to output the alarm condition and the
identification of the circuit monitoring module. (Franzon 134 (EX1002)).
As described above in section VII.B.3.c (claim 29[B]), Pacheco teaches that
the alarm interface 26, which includes microprocessor 44, generates a status signal
including at least the assigned value and an identification of the circuit monitoring
module (collectively, status communication) for transfer to the computer system
12 for display on the video monitor 14 (remote computing system, which
includes elements 12 and 14). (Pacheco at 4:31-41, 5:36-50, 6:47-7:4, 13:57-
14:15, Figs. 1, 3, 8C (EX1004)). Figure 2 of Pacheco shows that the alarm
interface 26 is connected to the computer system 12 by a two-wire cable 27
interconnected between a serial port of the computer system 12 and the RS 485
interface 52 of the systemboard 4. (Pacheco at 6:33-36, Fig. 2 (EX1004)).
(Franzon 135 (EX1002)).
A person of ordinary skill in the art would have been motivated to combine
the disclosure of transmitting the status communication indicative of the assigned
value and the identification of the circuit monitoring module for output by the
remote computer system, as in Pacheco, with the networked alarm system, as in
75
Patent 9,280,886
Handley, to provide specific alarm notification information so that personnel at the
remote monitoring station can identify the particular alarm condition and take
appropriate action as necessary. (Franzon 136 (EX1002); see Section VII.A.3
(Reasons to Combine)).
4. Claim 35
a) The apparatus of claim 29, wherein the received

parameter is provided by a field device and represents a
specified condition of the circuit detected by the field
device.
5. Claim 37
a) The apparatus of claim 29, wherein said

communications module limits the communicated
signal to digital bits, said digital bits describing the
assigned value and the identification of the monitoring
apparatus.
For the same reasons described in sections VII.B.3.c-d (claims 29[B]-29[C]),
the combination of Handley and Pacheco teaches claim 37. (Franzon 138
(EX1002)). Because the GUI in Pacheco displays the status of each sensor, a
person of ordinary skill in the art would have understood, or at least would have
found obvious, that the microprocessor 44 generates a status signal including at
least the assigned status for transfer to the computer system 12 for display on the
video monitor 14. (Franzon 138 (EX1002)). Since the microprocessor 44 stores
76
Patent 9,280,886
the state for each sensor in the level register 46 and when the sensor state changes
sets a corresponding flag bit of the status register (Pacheco at 7:1-18 (EX1004)),
one of ordinary skill of the art would have understood, or at least would have
found obvious, that it is at least this status, which is in the form of digital bits, that
was transferred to the computer system for display on the video monitor 14.
(Franzon 138 (EX1002)). A person of ordinary skill in the art would have been
motivated to combine Handley and Pacheco for the reasons described above in
section VII.A.3. (Franzon 138 (EX1002)).
6. Claim 52
a) The apparatus of claim 29, wherein the circuit

monitoring module is configured to compare the
parameter to a plurality of threshold values that each
define a respective plurality of ranges of digital values,
wherein each range corresponds to a respective one of a
plurality of discrete conditions of the circuit including a
normal condition and at least one alarm condition.
For the same reasons described in sections VII.B.3.b and VII.A.11 (claims
29[A], 38), Handley teaches claim 52. (Franzon 139 (EX1002)).
7. Claim 53
a) The apparatus of claim 52, wherein the plurality of

threshold values each define at least three ranges of
digital values that respectively correspond to at least
three discrete conditions of the circuit.
For the same reasons described in sections VII.A.12 and VII.B.6 (claims 39,
52), Handley teaches claim 53. (Franzon 140 (EX1002)).
77
Patent 9,280,886
8. Claim 54
a) The apparatus of claim 53, wherein the at least three

discrete conditions of the circuit include a normal
condition and at least two different alarm conditions,
and wherein the status is a discrete indication of which
of the at least three conditions to which the measured
parameter corresponds.
For the same reasons described in sections VII.A.13 and VII.B.6 (claims 40,
52), Handley teaches claim 54. (Franzon 141 (EX1002)).
78
Patent 9,280,886
VIII. CONCLUSION
Based on the foregoing, the challenged claims of the 886 patent recite
subject matter that is unpatentable. The Petitioner requests institution of an inter
partes review to cancel these claims.
Respectfully Submitted,
/Evelyn C. Mak/
David L. Cavanaugh
Registration No. 36,476
Roshan Mansinghani
Jonathan Stroud
Daniel V. Williams
Evelyn C. Mak
79
Patent 9,280,886
Table of Exhibits for U.S. Patent 9,280,886 Petition for Inter Partes Review
Exhibit Description
1001 U.S. Patent 9,280,886 (886 patent)
1002 Declaration of Professor Paul Franzon (Franzon)
U.S. Pat. 6,215,405 (Handley) (filed on May 11, 1998;
1003
published on Apr. 10, 2001)
U.S. Pat. 5,499,196 (Pacheco) (filed on Oct. 19, 1993;
1004
published on Mar. 12, 1996)
U.S. Pat. 6,057,549 (Castleman) (filed on May 30, 1997;
1005
published on May 2, 2000)
U.S. Pat. 6,360,277 (Ruckley) (filed on Jul. 22, 1998;
1006
published on Mar. 19, 2002)
1007 File History, 11/21/14 Preliminary Amendment
1008 File History, 3/11/15 Office Action
1009 File History, 5/26/15 Response
1010 File History, 5/26/15 Terminal Disclaimer
1011 File History, 10/7/15 Notice of Allowability
i
Patent 9,280,886
CERTIFICATE UNDER 37 CFR 42.24(d)
Under the provisions of 37 CFR 42.24(d), the undersigned hereby certifies
that the word count for the foregoing Petition for Inter Partes Review totals
13,945, which is less than the 14,000 words allowed under 37 CFR 42.24(a)(i).
Respectfully submitted,
Dated: October 6, 2017 /Evelyn C. Mak/

Evelyn C. Mak
Reg. No. 50,492
Wilmer Cutler Pickering Hale and Dorr LLP

1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
i
Patent 9,280,886
CERTIFICATE OF SERVICE
I hereby certify that on October 6, 2017, I caused a true and correct copy of
the foregoing materials:
Petition for Inter Partes Review of U.S. Patent No. 9,280,886 Under 35
U.S.C. 312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent No. 9,280,886
(EX1001-1011)
Power of Attorney
Fee Authorization
Word Count Certification Under 37 CFR 42.24(d)
to be served via Federal Express on the following correspondent of record as listed
on PAIR:
LEASON ELLIS LLP

ONE BARKER AVENUE
FIFTH FLOOR
WHITE PLAINS, NY 10601-1526
/Evelyn C. Mak/
Evelyn C. Mak
ii

Unified Patents Inc. v. Wireless Monitoring Systems, LLC, IPR2017-00027 (PTAB Oct. 6, 2017)

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Unified Patents Inc. v. Wireless Monitoring Systems, LLC, IPR2017-00027 (PTAB Oct. 6, 2017)

Uploaded by

Copyright:

Available Formats

IPR2018-00027 Petition

DOCKET NO.: 2211726-00149

Roshan Mansinghani, Reg. No. 62,429 (roshan@unifiedpatents.com)

UNITED STATES PATENT AND TRADEMARK OFFICE

WIRELESS MONITORING SYSTEMS LLC

PETITION FOR INTER PARTES REVIEW OF

I. MANDATORY NOTICES ............................................................................. 3

A. Real Party-in-Interest ............................................................................ 3

II. CERTIFICATION OF GROUNDS FOR STANDING .................................. 4

III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 4

A. Prior Art Patents and Printed Publications ............................................ 5

1. U.S. Pat. 6,215,405 (filed on May 11, 1998; published on

B. Grounds for Challenge .......................................................................... 5

IV. TECHNOLOGY BACKGROUND................................................................. 6

V. OVERVIEW OF THE 886 PATENT ............................................................ 8

A. Summary of the Alleged Invention ....................................................... 8

VI. CLAIM CONSTRUCTION .......................................................................... 15

A. Means-Plus-Function Terms ............................................................... 16

1. a comparison module configured to (claim 1) .................. 18

VII. SPECIFIC GROUNDS FOR PETITION ...................................................... 23

A. Ground I: Claims 1-2, 4-6, 9-10, 38-42, 51 are rendered obvious by

1. Overview of Handley ................................................................ 23

1. Overview of Castleman ............................................................ 55

Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or

U.S. Pat. No. 9,280,886 (886 patent (EX1001)) is owned by Wireless

Monitoring Systems, LLC (Patent Owner).

proceedings: Wireless Monitoring Systems LLC v. AT&T Inc. et al., 2-17-cv-

00501 (E.D. Tex.); Wireless Monitoring Systems LLC v. Comcast Corporation, 2-

2-17-cv-00503 (E.D. Tex.); Wireless Monitoring Systems LLC v. Smith Thompson

Security, LLC, 2-17-cv-00504 (E.D. Tex.); Wireless Monitoring Systems LLC v.

Charter Communications, Inc., 2-17-cv-00505 (E.D. Tex.); Wireless Monitoring

Systems LLC v. Vector Security, Inc., 2-17-cv-00506 (E.D. Tex.).

Mak (Reg. No. 50,492) will act as back-up counsel.

D. Service Information, Email, Hand Delivery and Postal

Unified consents to electronic service at david.cavanaugh@wilmerhale.com

and roshan@unifiedpatents.com. Petitioner can be reached at Wilmer Cutler

II. CERTIFICATION OF GROUNDS FOR STANDING

claims on the grounds identified in this Petition.

III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges

A. Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability

This Petition, supported by the declaration of Professor Paul Franzon

(Franzon Declaration or Franzon (EX1002)), requests cancellation of

U.S.C. 103. See 35 U.S.C. 314(a).

America Invents Act (AIA). Accordingly, the pre-AIA statutory framework

IV. TECHNOLOGY BACKGROUND

building management systems. (886 patent at 1:37-59 (EX1001); Handley at

2:55-65, Fig. 1 (EX1003); Pacheco at 4:65-5:3, Fig. 1 (EX1004); Franzon 16

In these alarm or security systems, it was known to provide circuits, such as

sensors, to monitor a zone or area of protection. (Handley at 2:60-62 (EX1003);

Franzon 17 (EX1002)). These systems supported many different types of sensors

glass break detectors, door/window contacts, shock sensors, switches, keypads,

temperature sensors, etc. (Handley at 2:60-65 (EX1003); Pacheco at 5:19-29

(EX1004); Franzon 17 (EX1002)).

In these alarm/security systems, it was also known to provide a monitoring

at 2:55-3:16, 4:47-5:48, Figs. 1-3 (EX1003); Pacheco at 4:65-5:29, 6:45-7:18,

monitoring device typically included a processor, among other circuit components,

more thresholds that corresponded to different conditions (e.g., normal/alarm, door

open/closed, fire/water not detected/detected, temperature below/exceeded a

threshold), and assigned a status (e.g., set a flag or bit to logical 0 or 1

depending on the condition) based on the comparison. (Handley at 3:42-48, 4:47-

Castleman at 15:7-35, Figs. 11-12 (EX1005); Franzon 18 (EX1002)).

In these alarm/security systems, it was also known that this monitoring