NOTE: This disposition is nonprecedential.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 Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2016-00116, IPR2016-00161, IPR2016-00173.

______________________ 

Decided: December 20, 2018

______________________ 

ROBERT GREENE STERNE, Sterne Kessler Goldstein & 

Fox, PLLC, Washington, DC, argued for appellant. Also 

represented by JASON DANIEL EISENBERG, DEIRDRE M.

WELLS. 

 RICHARD J. STARK, Cravath Swaine & Moore LLP, 

New York, NY, argued for cross-appellant. Also represented by TEENA-ANN V. SANKOORIKAL, Levine Lee LLP, 
2 VIVINT, INC. v. ALARM.COM INC. 

New York, NY; WILLIAM MANDIR, DAVID PHILLIP EMERY, 

Sughrue Mion PLLC, Washington, DC. 

 ______________________ 

Before PROST, Chief Judge, O’MALLEY and HUGHES,

Circuit Judges.

O’MALLEY, 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 reverse 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”).

 
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 communicate with monitored equipment so that a user, e.g. a 

property owner or contractor, is contacted if the equipment encounters problems. 

There are two ways, generally, that the server learns 

equipment has encountered an issue. First, the equipment can report a problem directly to the server. For 

example, if the equipment has low battery, then an interface 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 patent are all related and share similar specifications. For 

simplicity, we refer to the ’601 patent unless otherwise 

noted. 

 
4 VIVINT, INC. v. ALARM.COM INC. 

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 references 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 conditions, 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 different mode or modes of communication (page, Email, fax).”). 

According to Shetty, users may “access” the user profile 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 
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 communication 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 example, the preferred embodiment in Levac incorporates a 

“RUNTIME” variable that relays information about the 

second, minute, hour, day, month, or year when a message 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 rejected Alarm.com’s arguments for the remaining instituted 

claims. 

II. DISCUSSION 

A. Vivint’s Appeal

Vivint contends that the Board erroneously construed 

the “message profile” limitation and unreasonably concluded that Shetty discloses “remotely configur[ing]” a 

message profile. These limitations are both required by 

all the invalidated claims. For the remaining limitations, 
6 VIVINT, INC. v. ALARM.COM INC. 

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 identification 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. 

 
VIVINT, INC. v. ALARM.COM INC. 7

a first memory on which equipment identification codes of all monitored equipment 

are stored; 

a second memory in which communication 

device identification codes of all of said user-defined communication remote devices 

are stored, said communication device 

identification codes being configured in a 

plurality of said user-defined message profiles. 

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 “communication 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 [electronic 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 Gartside, 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.” Arendi 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 
8 VIVINT, INC. v. ALARM.COM INC. 

interpretation of the claims, reviewing any underlying 

factual findings for substantial evidence. Id.

At the outset, Vivint argues that the Board’s construction is entitled to deference because it relied on extrinsic 

evidence. We disagree. The Board construed “communication 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 patent . . . .” (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 construe the claim term “communication device identification 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 particular 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 
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 Decision at 20 (same). Even assuming this is correct, however, 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 construction 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 deliveries 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 construction also suggests the opposite. Its construction is therefore 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 consistent 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).

 
10 VIVINT, INC. v. ALARM.COM INC. 

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 relating to “normal status message[s].” In some claims, this 

5 Alarm.com argues that the “Device ID” and “Serial 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 teachings in the ’123 patent. See, e.g., ’123 patent, col. 14 ll. 

57–60.

6 Because we find that the Board erred in construing the claims at issue, we do not address the Board’s 

application of that construction to the prior art.

 
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 whether an incoming message is a normal status message 

indicative of proper operation of the piece of remote 

equipment.”). In other claims, the “normal status message” is sent “if [some] equipment is functioning properly.” 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 mechanism for periodically sending a normal status message if 

the piece of remote equipment is functioning properly . . . .”).

Alarm.com argues that Shetty, in view of Britton, satisfies 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 substantial 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 explained, 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 
12 VIVINT, INC. v. ALARM.COM INC. 

to test the communication channel between the protected 

premise panel 32 and receiving equipment 34 for a compromise” (emphasis added)). If a message is received, or 

not, it indirectly relays information about the communication 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 compromised 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 telephone 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. 
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 selection 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 misunderstands 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 actually would have had reason to do so in the absence 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. 

 
14 VIVINT, INC. v. ALARM.COM INC. 

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 ordinary skill in the art in the absence of improper 

hindsight knowledge.

See, e.g., ’601 Decision at 60–61 (internal citations omitted). 

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 example, 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 because 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) (“Contrary 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 inclinations 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).

 
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 remaining 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.