Vivint, Inc. v. ALARM.COM INC., Cross-Appellant 2017-2218, 2017-2219, 2017-2220, 2017-2260,…

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIVINT, INC.,
Appellant
v.
ALARM.COM INC.,
Cross-Appellant
______________________
2017-2218, 2017-2219, 2017-2220, 2017-2260, 2017-2261,
2017-2262
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2016-00116, IPR2016-00161, IPR2016-00173.
______________________
Decided: December 20, 2018
______________________
ROBERT G REENE STERNE , Sterne Kessler Goldstein &
Fox, PLLC, Washington, DC, argued for appellant. Also
represented by JASON D ANIEL E ISENBERG , D EIRDRE M.
WELLS .
RICHARD J. STARK , Cravath Swaine & Moore LLP,
New York, NY, argued for cross-appellant. Also repre-
sented by TEENA -ANN V. SANKOORIKAL, Levine Lee LLP,

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VIVINT , INC. v. ALARM . COM INC. 2
New York, NY; WILLIAM M ANDIR, D AVID PHILLIP E MERY,
Sughrue Mion PLLC, Washington, DC.
______________________
Before PROST, Chief Judge, O’M ALLEY and H UGHES ,
Circuit Judges.
O’M ALLEY, Circuit Judge.
In three inter partes review proceedings requested by
Alarm.com, Inc., the Patent Trial and Appeal Board (“the
Board”) invalidated various claims of Vivint Inc.’s U.S.
Patent Nos. 6,147,601 (“’601 patent”), 6,462,654 (“’654
patent”), and 6,535,123 (“’123 patent”).1 It also found
other claims patentable over the prior art.
Vivint now appeals the Board’s decision invalidating
its claims. Alarm.com cross-appeals, arguing that the
surviving claims should also be invalidated. Because the
Board did not err in invalidating the patent claims at
issue in Vivint’s appeal, we affirm. With respect to
Alarm.com’s cross-appeal, we conclude that the Board’s
construction of “communication device identification
codes” is not consistent with the broadest reasonable
interpretation of the relevant claims. We therefore re-
verse its construction, vacate its related conclusions, and
remand for further consideration. We affirm the Board’s
decision on the claims at issue in the cross-appeal in all
other respects.
1 See Alarm.com Inc. v. Vivint, Inc., IPR2016-00116,
Paper No. 39 (P.T.A.B. May 2, 2017) (“’601 Decision”);
Alarm.com Inc. v. Vivint, Inc., IPR2016-00173, Paper No.
40 (P.T.AB May 2, 2017) (“’123 Decision”); Alarm.com Inc.
v. Vivint, Inc., IPR2016-00161, 2017 WL 1969742
(P.T.A.B. May 10, 2017) (“’654 Decision”).

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VIVINT , INC. v. ALARM . COM INC. 3
I. BACKGROUND
A. The Technology
The patents at issue describe systems and methods
for remotely monitoring equipment, such as a heating,
ventilating, and cooling system (“HVAC system”). See,
e.g., ’601 patent, col. 1, ll. 10–14.2 These systems and
methods work by using a centralized server to communi-
cate with monitored equipment so that a user, e.g. a
property owner or contractor, is contacted if the equip-
ment encounters problems.
There are two ways, generally, that the server learns
equipment has encountered an issue. First, the equip-
ment can report a problem directly to the server. For
example, if the equipment has low battery, then an inter-
face unit connected to the equipment sends an “exception”
message to the server. The server then processes this
message and, depending on how the server is configured,
sends a notification to certain users. Second, interface
units can be configured to send status messages to the
server. At some defined interval, the server compares the
list of interfaces that relayed a status message with a list
of all the equipment being monitored. For each missing
entry, i.e. equipment that did not send a status message,
the server “sends out the appropriate messages to the
proper individuals.” Id. col. 5, ll. 6–10.
In either case, users are contacted based on what the
patents call a “message profile.” Id. col. 2, ll. 14–16. This
message profile essentially directs the server where to
send messages if a problem arises. Id. For example, a
user might configure a message profile so that different
2 The ’601 patent, the ’123 patent, and the ’654 pa-
tent are all related and share similar specifications. For
simplicity, we refer to the ’601 patent unless otherwise
noted.

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VIVINT , INC. v. ALARM . COM INC. 4
people are notified if an issue is encountered during the
day or at night, if an issue is high priority or low, etc. A
user might similarly configure a message profile so that
multiple people are notified about the same problem.
B. The Prior Art
Although Alarm.com raised several prior art refer-
ences before the Board, only three are relevant to this
appeal. We will briefly discuss each in turn.
1. Shetty
U.S. Patent 5,808,907 (“Shetty”) describes a method
for monitoring machines and notifying users if certain
events occur. J.A. 2111. It works by having a “batch
processing means 102” retrieve a list of events that have
occurred, stored in an “event database,” and a list of
which users should be contacted and under what condi-
tions, stored in a “user profile database.” J.A. 2115. The
batch processing means then compares the list of events
that have occurred with the list of events that trigger a
notification for each profile. “If all the conditions of a user
profile are met, then the user is notified, via a notification
means 112.” Id. (“Each profile may also trigger a differ-
ent mode or modes of communication (page, Email, fax).”).
According to Shetty, users may “access” the user pro-
file database and the event database through a user
interface. Id. (“A user interface 110 allows a user to
access both the user profile database 106 and the event
database 108.”).
2. Britton
U.S. Patent 6,040,770 (“Britton”) describes a system
for supervising the communication path between an
alarm panel and a centralized server. J.A. 2125. This
path is supervised by the “continual transmission” of
check-in messages sent from the alarm panel to the
server. Id. If a check-in message is received before the

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VIVINT , INC. v. ALARM . COM INC. 5
expiration of a predefined interval, “then the integrity of
the communication path for that certain panel 32 has
been proven.” J.A. 2126. If it is not, the server generates
an alert. J.A. 2125–26.
3. Levac
U.S. Patent 6,034,970 (“Levac”) describes systems and
methods for transmitting messages generated by one or
more “message source(s)” to different types of communica-
tion devices. J.A. 2136. As relevant to this appeal, Levac
explains that these messages are embedded in an “.msa
file” along with information about the message, such as
when and where it should be sent. J.A. 2137. For exam-
ple, the preferred embodiment in Levac incorporates a
“RUNTIME” variable that relays information about the
second, minute, hour, day, month, or year when a mes-
sage should “start running” and “end running.” J.A. 2138.
C. Procedural History
Based on Alarm.com’s petitions, the Board instituted
review of claims 1, 2, 4–15, 17–23, 25–31, and 33–41 of
the ’601 patent, claims 9, 10, 14, 17, 18, 22, and 25–28 of
the ’654 patent, and all claims of the ’123 patent. The
Board ultimately invalidated as obvious claims 1, 2, 4, 6,
7, 10–15, 17, 18, 22, 23, 25, 29, and 38 of the ’601 Patent;
claims 9, 10, 14, and 27 of the ’654 Patent; and claims 1,
2, 4–6, 10, 13, and 15–17 of the ’123 Patent. But it reject-
ed Alarm.com’s arguments for the remaining instituted
claims.
II. D ISCUSSION
A. Vivint’s Appeal
Vivint contends that the Board erroneously construed
the “message profile” limitation and unreasonably con-
cluded that Shetty discloses “remotely configur[ing]” a
message profile. These limitations are both required by
all the invalidated claims. For the remaining limitations,

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VIVINT , INC. v. ALARM . COM INC. 6
Vivint insists that the Board failed to adequately explain
its findings. After a careful examination of the Board’s
findings and conclusions as well as a review of the record
upon which they were based, however, we find no error
warranting reversal. We therefore affirm the Board’s
conclusion on these issues and its decisions on these
claims.
B. Alarm.com’s Cross-Appeal
Alarm.com argues that the Board erred in construing
a limitation relating to “communication device identifica-
tion codes.” Alarm.com also contends that the Board
erred in finding various claims relating to “normal status
message[s]” patentable over the prior art. Finally,
Alarm.com maintains that the Board similarly erred with
respect to claim 19 of the ’601 patent. We address each
argument in turn.
1. “communication device identification codes”
Several claims of the ’601 patent and the ’123 patent
recite a message profile that is further configured to
include “communication device identification codes.”3 For
example, claim 26 of the ’601 patent reads:
26. A system according to claim 22, said system
monitoring a plurality of pieces of equipment,
each piece having an identification code, said
server further comprising:
3 This limitation is required by claims 26–28, 30–
31, 33–37, and 41 of the ’601 patent and claims 3 and 14
of the ’123 patent. Some claims of the ’654 patent also
include this limitation. See, e.g., ’654 patent, col. 17, ll.
63–67. But the proper construction of “communication
device identification codes” in the ’654 patent is not
presented here.

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VIVINT , INC. v. ALARM . COM INC. 7
a first memory on which equipment identi-
fication codes of all monitored equipment
are stored;
a second memory in which communication
device identification codes of all of said us-
er-defined communication remote devices
are stored, said communication device
identification codes being configured in a
plurality of said user-defined message pro-
files.
See, e.g., ’601 patent, col. 11, ll. 20–29 (emphases added);
’123 patent, col. 16, ll. 48–57.
Before the Board, Alarm.com argued that “communi-
cation device identification codes” refer to phone numbers
or email addresses. ’601 Decision at 19 (“Alarm.com
reiterates that . . . storing telephone numbers and email
addresses are the only disclosure of storing any data
about communication devices.”); ’123 Decision at 17
(same). The Board disagreed. Instead, it construed
“communication device identification codes” to include
“either a device ID (e.g., a [mobile identification number
(“MIN”)]) or a serial number of a device (e.g., an [electron-
ic serial number (“ESN”)]).” See ’601 Decision at 20–21;
’123 Decision at 17–20.
We review the Board’s conclusions of law de novo and
its findings of fact for substantial evidence. In re Gart-
side, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial
evidence is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Aren-
di S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
2016); see also Consol. Edison Co. of New York v.
N.L.R.B., 305 U.S. 197, 229 (1938). This same framework
applies to claim construction. PPC Broadband, Inc. v.
Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751
(Fed. Cir. 2016). We therefore conduct a de novo review of
the Board’s determination of the broadest reasonable

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VIVINT , INC. v. ALARM . COM INC. 8
interpretation of the claims, reviewing any underlying
factual findings for substantial evidence. Id.
At the outset, Vivint argues that the Board’s construc-
tion is entitled to deference because it relied on extrinsic
evidence. We disagree. The Board construed “communi-
cation device identification codes” without reference to
any extrinsic evidence. ’601 Decision at 20 (“Based on our
review of the claims and Specification of the ’601 pa-
tent . . . .” (emphasis added)); ’123 Decision at 13 (same).
The Board did credit Vivint’s expert, but only in applying
its construction of “communication device identification
codes” to the prior art:
In our claim construction section above, we con-
strue the claim term “communication device iden-
tification codes” as including either a device ID or
serial number of a device. Shetty’s telephone
numbers and email addresses are not consistent
with this construction because they do not identify
uniquely a specific device. We also credit Vivint’s
declarant, Mr. Denning’s, testimony on this par-
ticular issue. See Ex. 2010 ¶¶ 127–130.
’601 Decision at 52 (internal citations omitted); ’123
Decision at 48 (same); see also J.A. 4894–95 (relevant
portion of Mr. Denning’s testimony, explaining his views
on the scope of Shetty). The Board’s construction of
“communication device identification codes” is therefore
not entitled to deference. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“As all parties
agree, when the district court reviews only evidence
intrinsic to the patent . . . the judge’s determination will
amount solely to a determination of law, and the Court of
Appeals will review that construction de novo.”).
Turning to the merits, we agree with Alarm.com that
the Board erred in construing “communication device
identification codes.” As the Board acknowledged, neither
the ’601 patent nor the ’123 patent define “communication

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VIVINT , INC. v. ALARM . COM INC. 9
device identification codes” in the specification. ’601
Decision at 20; ’123 Decision at 17. And yet, the Board
decided that “communication device identification codes”
must refer to something “capable of uniquely identifying
communication devices.” ’601 Decision at 20; ’123 Deci-
sion at 20 (same). Even assuming this is correct, howev-
er, the Board’s conclusion that a phone number or email
address cannot uniquely identify a communication device
defies the patents’ teachings. For example, both patents
explain that a mobile identification number refers to a
device in the same way that a phone number refers to a
cellular phone, i.e. a communication device. ’601 patent,
col. 6, ll. 61–65 (“Every interface unit 10 is provided, like
a cellular telephone, with an electronic serial number
(ESN, to identify the specific interface unit sending the
message) and a mobile identification number (MIN,
similar to a cellular telephone’s phone number).”); ’123
patent, col. 10, ll. 38–42 (same).4 But the Board’s con-
struction suggests the opposite. The ’123 patent also
expressly teaches that a phone number can uniquely
identify a delivery address, i.e. a communication device.
See, e.g., ’123 patent, col. 14, ll. 57–60 (“Multiple deliver-
ies are accomplished by having multiple delivery records
in the delivery tables 722–725 with the same Message
Delivery ID each having a unique delivery address i.e. fax
number, phone number, etc.”). But the Board construc-
tion also suggests the opposite. Its construction is there-
fore not reasonable. PPC Broadband, 815 F.3d at 755
(“Above all, the broadest reasonable interpretation must
be reasonable in light of the claims and specification.”).
Vivint insists that the Board’s construction is con-
sistent with the plain meaning of “communication device
4 The patents also suggest that an email address is
used to identify a certain communication device. ’601
patent, col. 6, ll. 7–23; ’123 patent, col. 9, ll. 17–33 (same).

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VIVINT , INC. v. ALARM . COM INC. 10
identification codes.” We disagree. At most, Vivint’s
citations to the ’601 patent show that serial numbers or
mobile identification numbers might be examples of
“communication device identification codes.” But this
falls short of explaining why phone numbers and email
addresses are not. Vivint’s argument as to the ’123 patent
fares no better. That the ’123 patent includes “Device ID”
and “Serial Number” variables in a particular figure, for
example, suggests these variables might also be used to
identify communication devices.5 It does not suggest that
phone numbers and email addresses cannot also do so.
See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
1065–66 (Fed. Cir. 2018) (“Even if Polaris is correct that
Figure 1 shows a mounting plate that does not extend
across the entire passenger compartment, Denney’s
specification is broader than the embodiment illustrated
in that figure.”).
Accordingly, we reverse the Board’s construction of
“communication device identification codes,” vacate its
related conclusions, and remand for further consideration
in light of the foregoing analysis.6
2. “normal status message”
Several of the claims at issue recite limitations relat-
ing to “normal status message[s].” In some claims, this
5 Alarm.com argues that the “Device ID” and “Seri-
al Number” variables describe the equipment sensors
rather than the communication devices. We need not
resolve that question. Even assuming Vivint is correct,
nothing about this single figure undoes the other teach-
ings in the ’123 patent. See, e.g., ’123 patent, col. 14 ll.
57–60.
6 Because we find that the Board erred in constru-
ing the claims at issue, we do not address the Board’s
application of that construction to the prior art.

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VIVINT , INC. v. ALARM . COM INC. 11
“normal status message” must be “indicative of” some
equipment operating properly. See, e.g. ’601 patent, col.,
ll. 19–22 (“5. A method according to claim 1, wherein
step (e) further comprises the step of determining wheth-
er an incoming message is a normal status message
indicative of proper operation of the piece of remote
equipment.”). In other claims, the “normal status mes-
sage” is sent “if [some] equipment is functioning proper-
ly.” See, e.g., ’654 patent, col. 19, ll. 56–59 (“25. A system
for monitoring remote equipment, comprising . . . an
interface unit . . . having a message generating mecha-
nism for periodically sending a normal status message if
the piece of remote equipment is functioning proper-
ly . . . .”).
Alarm.com argues that Shetty, in view of Britton, sat-
isfies these various normal status message limitations
because Britton teaches sending status messages that
indicate whether equipment is functioning properly.
The Board disagreed based on, among other things,
its interpretation of what Britton discloses. ’601 Decision
at 67–69, ’123 Decision at 58–60, ’654 Decision at 55–57.
We review that determination for substantial evidence.
In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1332 (Fed.
Cir. 2016) (“An examination of the scope and content of
the prior art produces factual findings reviewed for sub-
stantial evidence.”); Graham v. John Deere Co. of Kansas
City, 383 U.S. 1 (1966) (acknowledging that obviousness
raises “several basic factual inquiries” including “the
scope and content of the prior art”).
The Board’s conclusion about the scope of Britton is
supported by substantial evidence. As the Board ex-
plained, Britton differs from the claimed inventions
because Britton’s status messages reflect the integrity of a
communication path, such as a cellular network, linking
alarm equipment and a central alarm monitor. See, e.g.,
J.A. 2125 (explaining that status messages are “designed

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VIVINT , INC. v. ALARM . COM INC. 12
to test the communication channel between the protected
premise panel 32 and receiving equipment 34 for a com-
promise” (emphasis added)). If a message is received, or
not, it indirectly relays information about the communica-
tion path. See, e.g., J.A. 2126 (“If the transmission of the
message corresponding to the value seventeen (17) is
properly received by the receiving equipment 34—before
the expiration of the thirty-seventh (37th) minute—then
the integrity of the communication path for that certain
panel 32 has been proven.” (emphasis added)); J.A. 2124
(“[T]he ‘interrogation’ message corresponds to an inquiry,
‘address no, ‘x,’ do you respond?’ If there is no satisfactory
response, then the central alarm monitoring station
follows up with further error checking to detect a com-
promised communication path.” (emphasis added)). But
Britton’s status messages do not confirm that equipment,
sensors, or interfaces are functioning properly. See Oral
Arg. at 34:18–34:30, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-2218.mp3 (“[Court:] But isn’t the problem that you
could get that message in Britton, saying that the tele-
phone connection is okay, but still have an underlying
problem with the system. [Counsel for Alarm.com:] That
certainly is the issue the Board identified . . . .”). By
contrast, the patents at issue explain that normal status
messages convey information, directly or indirectly, about
monitored equipment, e.g. sensors, interfaces, or other
equipment. See, e.g.,’601 patent, col. 5, ll. 1–23; ’123
patent, col. 6, ll. 23–53; ’654 patent, col. 6, ll. 24–55. This
is also what the claims require. See ’601 Decision at 67–
69, ’123 Decision at 58–60, ’654 Decision at 55–57.

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VIVINT , INC. v. ALARM . COM INC. 13
We therefore affirm the Board’s conclusion that the
normal status message claims7 are patentable over the
prior art.
3. Claim 19 of the ’601 patent
Claim 19 of the ’601 patent requires “enabling selec-
tion of different user-defined communication devices to
receive outgoing exception messages at different time
periods.” ’601 patent, col. 10, ll. 28–34.
Alarm.com argues that, because it would have been
possible to modify Shetty in view of Levac, claim 19 is
obvious. Cross-Appellant Br. at 76 (“Through its finding
that ‘it might have been possible [to] us[e] Levac’s system’
parameters to practice claim 19, the Board effectively
acknowledged . . . that some uses of Levac in combination
with Shetty would meet the time-related elements of
claim 19. That is all that is required.”). But this misun-
derstands the Board’s reasoning. Rather than stating
that Shetty in view of Levac could not render claim 19
obvious, the Board focused on the absence of a motivation
to modify Shetty to practice claim 19 based on Levac:
Although it might have been possible using
Levac’s system to define two ‘messages’ in the
manner proposed by Alarm.com—with one to run
from 9:00 AM to 5:00 PM and the second to run
from 5:00 PM to 9:00 AM, with each specifying a
different mode of notification—Alarm.com points
to no evidence that the ordinarily skilled artisan
at the time of the alleged invention of claim 19 ac-
tually would have had reason to do so in the ab-
sence of the teachings of the ’601 patent itself. In
7 This includes claims 5, 8–9, 20–21, 30–31, 37, and
39–41 of the ’601 patent; claims 17, 18, 22, 25, 26, and 28
of the ’654 patent; and claims 7–9, 11–12, and 18–20 of
the ’123 patent.

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VIVINT , INC. v. ALARM . COM INC. 14
other words, in light of the evidence before us, we
are not persuaded that the subject matter of claim
19 would have been obvious to a person of ordi-
nary skill in the art in the absence of improper
hindsight knowledge.
See, e.g., ’601 Decision at 60–61 (internal citations omit-
ted).
We review a decision by the Board about the presence
or absence of a motivation to combine for substantial
evidence. Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016). Substantial
evidence supports the Board’s conclusion here. For exam-
ple, Shetty does not suggest that it is desirable to notify
different users depending on the time of day. Nor does
Levac teach using its system to accomplish that goal, even
if such a configuration is possible.8 Cf. Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to
8 To the extent Alarm.com invites us to reverse be-
cause the Board acknowledged a possible motivation in its
Institution Decision or found a motivation with respect to
different claims, we decline to do so. See Trivascular, Inc.
v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“Con-
trary to TriVascular’s assertions, the Board is not bound
by any findings made in its Institution Decision. At that
point, the Board is considering the matter preliminarily
without the benefit of a full record. The Board is free to
change its view of the merits after further development of
the record and should do so if convinced its initial inclina-
tions were wrong.” (emphasis in original)); Oral Arg. at
31:30–32:40, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-2218.mp3 (discussing motivation to combine with
respect to claim 19).

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VIVINT , INC. v. ALARM . COM INC. 15
make the combinations or modifications of prior art to
arrive at the claimed invention.”). We therefore affirm
the Board’s conclusion as to claim 19 being patentable
over the prior art.
III. CONCLUSION
We have considered Vivint’s and Alarm.com’s remain-
ing arguments and find them unpersuasive. Accordingly,
we reverse the Board’s construction of “communication
device identification codes,” vacate its related conclusions,
and remand for further consideration consistent with this
opinion. We affirm in all other respects.
AFFIRMED AS TO CASE NOS. 17-2218, 17-2219, 17-
2220
AFFIRMED IN PART, VACATED IN PART,
REVERSED IN PART, AND REMANDED AS TO
CASE NOS. 17-2260, 17-2261, 17-2262
COSTS
No costs.

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