NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

VIVINT, INC.,

Appellant

v.

ALARM.COM INC.,

Appellee

______________________ 

2017-2076

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

01977.

______________________ 

Decided: July 26, 2018

______________________ 

 ROBERT GREENE STERNE, Sterne Kessler Goldstein & 

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

represented by JASON DANIEL EISENBERG, WILLIAM H.

MILLIKEN. 

 RICHARD J. STARK, Cravath Swaine & Moore LLP, 

New York, NY, argued for appellee. Also represented by 

DAVID PHILLIP EMERY, WILLIAM MANDIR, Sughrue Mion 

PLLC, Washington, DC; TEENA-ANN V. SANKOORIKAL, 

Levine Lee LLP, New York, NY.
2 VIVINT, INC. v. ALARM.COM INC. 

______________________ 

Before LOURIE, CHEN, and STOLL, Circuit Judges.

LOURIE, Circuit Judge. 

Vivint, Inc. (“Vivint”) appeals from the final written 

decision of the United States Patent and Trademark 

Office Patent Trial and Appeal Board (“the Board”) in an 

inter partes review proceeding determining that claims 1–

9, 14–18, and 22–38 of U.S. Patent 6,924,727 (“the ’727 

patent”) are unpatentable as obvious. See Alarm.com Inc.

v. Vivint, Inc., No. IPR2015-01977, 2017 WL 1096522, at 

*28 (P.T.A.B. Mar. 22, 2017) (“Decision”). Because the 

Board did not err in its decision, we affirm. 

BACKGROUND

Vivint owns the ’727 patent directed to a method that 

allows a user to remotely control electronic devices located 

in the user’s home. See ’727 patent col. 1 ll. 7–9. A homelocated electronic device may be “a microwave, a rice 

cooker, a refrigerator, lighting fixtures, an air conditioner, 

a video recorder, a gas leakage detection device, a water 

heater and so forth.” Id. col. 9 ll. 6–10. The user controls 

these devices from a terminal “such as a portable telephone, a notebook PC, and PDA.” Id. col. 8 ll. 10–13. The 

’727 patent discloses a system that supports different 

terminal models and uses the terminal’s model name to 

format the display according to the terminal’s display 

capabilities. See id. col. 8 ll. 10–33, col. 12 ll. 43–49, fig. 8.

To remotely control and monitor multiple homelocated devices, prior art methods relied directly upon a 

home server. See id. col. 2 ll. 27–43. In order to support 

multiple tasks running in parallel, the home server 

required high processing power, which resulted in high 

operating costs. See id. The ’727 patent purports to 

improve upon the prior art by employing a home network 

management facility, which is interposed between the 
VIVINT, INC. v. ALARM.COM INC. 3

terminal and the home server. See id. col. 2 ll. 46–54. By 

leveraging the management facility, the home server can

be a “simple server” where “large processing power” is not 

required. See id. col. 3 ll. 17–28.

Using the patented method, a user can thus turn on 

the air conditioning in his or her home using a portable 

telephone, for example. See id. col. 19 l. 51–col. 20 l. 14. 

To do this, the terminal must first establish a connection 

to the home network management facility, and send its 

model name to retrieve the display format appropriate for 

the terminal’s display capabilities. See id. col. 14 ll. 44–

65. Then, after the user completes the authentication 

process, the network management server in the management facility transmits the status information of the 

home-located device to the user’s terminal, see id. col. 16 l. 

56–col. 17 l. 4, along with a menu of options for the user 

to select a different status, see id. col. 17 l. 47–col. 18 l. 36. 

Once the user selects a status, the terminal sends a 

“decision signal” to the home network management facility. Id. col. 19 ll. 61–65, fig. 11 item Sa17. Next, a “modified status information” corresponding to the decision 

signal is added to the decision signal, resulting in a “control instruction,” which is ultimately transmitted to the

home server. See id. col. 19 l. 66–col. 20 l. 5, fig. 11 items 

Sa18, Sa19. The home server then “executes [the] driver 

software of the home-located electronic device[]” based on 

the user’s selection. See id. col. 20 ll. 6–13. This causes 

the air conditioner to switch to the “ON” position. See id.

col. 20 ll. 13–15. 

Independent claim 1 is representative and reads as 

follows:

1. A method for remote control of home-located 

electronic devices, comprising the steps of:

receiving, at a management facility, from a 

terminal via a network, a request signal and a 
4 VIVINT, INC. v. ALARM.COM INC. 

terminal identifier that identifies said terminal; 

identifying, in said managing facility a server, 

said server being identified by a server identifier that corresponds to said terminal identifier; 

obtaining, in said management facility, from 

said server via said network, status information and said server identifier, said status 

information indicative of the status of homelocated electronic devices controlled by said 

server; 

generating display information for said terminal dependent upon the performance of said 

terminal, wherein said display information includes the status of said home-located electronic devices based on said status 

information and a prompt for input of a control instruction for said home-located electronic devices, said terminal being identified by 

said terminal identifier, said terminal identifier corresponding to said server identifier; 

transmitting said display information from 

said management facility to said terminal; 

displaying, with said terminal, a screen showing the status of said home-located electronic 

devices and a screen to prompt for input of a 

control instruction of said home-located electronic devices on the basis of the received display information; 

transmitting, by said terminal, said terminal 

identifier and first control information; 

generating, by said management facility, second control information that directs said serv-
VIVINT, INC. v. ALARM.COM INC. 5

er to perform control of said home-located 

electronic devices, on the basis of said first 

control information; 

transmitting, by said management facility, 

said second control information to said server, 

said server being identified by said server 

identifier that corresponds to said terminal 

identifier, and 

controlling, by said server, said home-located 

electronic devices on the basis of said second 

control information. 

Id. col. 34 ll. 2–43 (emphases added). 

Alarm.com Inc. (“Alarm.com”) filed a petition for inter 

partes review asserting that claims 1–9, 14–18, and 22–38 

of the ’727 patent would have been obvious over various

combinations of prior art references, which all include

U.S. Patent 6,580,950 (“Johnson”) and U.S. Patent 

6,161,140 (“Moriya”). The Board instituted review of all 

challenged claims and grounds. On appeal, Vivint only 

challenges the Board’s findings with respect to the teachings of Johnson and Moriya. Johnson teaches an internetbased home communications system. See Johnson Abstract. It allows a user to monitor and control devices 

within a home from a remote location by accessing a web 

page via the internet. See id. col. 2 ll. 8–28. Moriya

teaches a system that can detect the display capabilities 

or features of a particular data terminal using its model 

code. See Moriya Abstract. The system then sends data 

formatted according to the display capabilities of that 

terminal. See id. col. 1 ll. 51–67. 

In its final written decision, the Board concluded that 

all challenged claims were unpatentable as obvious. See 

Decision, 2017 WL 1096522, at *28. The Board began by

maintaining its construction of “terminal identifier” from 

its institution decision, in which it construed the term to 
6 VIVINT, INC. v. ALARM.COM INC. 

mean “an identifier associated with a terminal that 

enables the home network management facility to identify 

or communicate with the terminal.” Id. at *6. The challenged independent claims 1, 16, 22, and 31 all recite this 

term. Based on this construction, the Board found that 

Johnson and Moriya each independently taught “receiving, at a management facility, . . . a terminal identifier”

(“the terminal identifier limitation”). ’727 patent col. 34 

ll. 4–6. The Board found that Johnson inherently taught 

the terminal identifier limitation, where the terminal 

identifier is in the form of an IP address, because it comported with its claim construction. See Decision, 2017 WL 

1096522, at *10. It also credited the testimony of Dr. 

Rhyne, Alarm.com’s expert, who testified that Johnson’s 

disclosure of internet communications between a user 

computer and a data center inherently discloses an IP 

address. See id. The Board also found that Moriya 

taught the terminal identifier limitation because Moriya’s 

model code was a terminal identifier. See id. at *11. 

Claims 29 and 37, which depend from claims 22 and 31, 

respectively, recite “wherein” a terminal identifier “is a 

manufacturer model identifier.” ’727 patent col. 38 ll. 35–

36, col. 40 ll. 8–9. The Board found that the model code in 

Moriya was just such a manufacturer model identifier. 

See Decision, 2017 WL 1096522, at *11–12. 

The Board also found that Johnson taught the “generating . . . second control information . . . on the basis of 

said first control information” limitation recited in claims 

1 and 16. Id. at *14–15. According to the Board, the 

command instruction disclosed in Johnson, which is

transmitted from the terminal to the data center, corresponded to the “first control information”; the command 

instruction, which was then transmitted from the data 

center to the control unit, which is analogous to the home 

server in the ’727 patent, corresponded to the “second 

control information.” Id. at *15. The Board determined 

that this sequence of events was “sufficient to teach 
VIVINT, INC. v. ALARM.COM INC. 7

generating second control information based on first 

control information.” Id. Based in part on these findings, 

the Board concluded that the challenged claims would 

have been obvious over the asserted combinations of prior 

art references. 

Vivint timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal determinations de novo, 

In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the 

Board’s factual findings underlying those determinations 

for substantial evidence, In re Gartside, 203 F.3d 1305, 

1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support the finding. Consol. Edison Co. v. 

NLRB, 305 U.S. 197, 229 (1938). We review the Board’s 

claim constructions de novo “and its underlying factual 

determinations involving extrinsic evidence for substantial evidence.” Microsoft Corp. v. Proxyconn, Inc., 789 

F.3d 1292, 1297 (Fed. Cir. 2015) (citing Teva Pharm. 

USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015)). 

Obviousness is a question of law based on underlying 

factual findings, including “the scope and content of the 

prior art, differences between the prior art and the claims 

at issue, the level of ordinary skill in the pertinent art, 

and any objective indicia of non-obviousness.” Randall 

Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing 

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). 

Whether there are inherent teachings in a prior art 

reference is a question of fact. See In re Napier, 55 F.3d 

610, 613 (Fed. Cir. 1995).

Vivint argues that the Board erred in its construction 

of “terminal identifier” and its findings regarding the 

teachings of Johnson and Moriya. We address each 

argument in turn.
8 VIVINT, INC. v. ALARM.COM INC. 

Vivint first argues that the Board incorrectly construed “terminal identifier” by departing from the plain 

meaning of the term. According to Vivint, under the 

Board’s construction, the term would encompass an 

identifier that enables communication with a terminal, 

but not allow the terminal to be identified, which contradicts the term’s plain meaning. Vivint also argues that 

the terminal identifier should uniquely identify the terminal, as with a serial number. 

Alarm.com responds∗ that the Board’s construction is 

reasonable in light of the claims and specification. 

Alarm.com also contends that Vivint’s attempts to restrict 

the terminal identifier to certain forms, like the serial 

number, is not supported by the specification.

We agree with Alarm.com that the Board’s claim construction was reasonable. In an inter partes review, 

claims are given their broadest reasonable interpretation. 

See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 

2142–46 (2016). The specification and the claims describe 

the terminal identifier as being used to identify the terminal as well as to enable communication with the terminal. See ’727 patent col. 8 ll. 34–41. For example, 

independent claim 1 recites “a terminal identifier that 

identifies said terminal.” Id. col. 34 ll. 5–6. And independent claim 16 recites “said terminal identifier to 

determine at least one of a display capability or a communication capability of said terminal.” Id. col. 36 ll. 14–

16. The Board found these claims instructive as to the 

meaning of “terminal identifier” in that they taught a 

terminal identifier that is used both to identify and communicate with the terminal. See Decision, 2017 WL 

1986522, at *5. Contrary to Vivint’s contentions, the 

plain language of the claims does not require that the 

 

∗

 It is of course the principal and expected function 

of an alarm to respond.
VIVINT, INC. v. ALARM.COM INC. 9

terminal identifier be unique or be in any specific format, 

like a serial number. See id. The Board’s construction 

simply encompasses both disclosed functions of the terminal identifier. We therefore conclude that the Board’s 

construction was proper. 

Vivint next argues that the Board erred in finding

that Johnson inherently discloses the terminal identifier 

limitation, where the terminal identifier is in the form of 

an IP address. According to Vivint, if Johnson had a 

gateway server or NAT router between the user terminal 

and the data center, then the IP address would not necessarily reach the management facility as required by the 

claims, and thus does not meet the inherency requirement.

Alarm.com responds that substantial evidence supported the Board’s finding that Johnson inherently teaches the terminal identifier limitation. According to 

Alarm.com, adding a gateway server or NAT router to 

Johnson is a modification imagined by Vivint and is not 

actually disclosed by Johnson. Furthermore, Dr. Rhyne, 

Alarm.com’s expert, testified that Johnson inherently

discloses an IP address because it is necessarily used in 

internet communications between a user computer and a 

data center. 

We agree with Vivint that the Board erred in finding 

that Johnson inherently teaches the terminal identifier 

limitation and hence supports a conclusion of obviousness. 

The inherency doctrine allows for a prior art reference to 

supply a missing limitation if it is “necessarily present” or 

“inherent” in that reference. See Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (internal 

citation omitted). Inherency ordinarily applies in an 

anticipation context where a prior art reference, which 

does not expressly disclose every limitation of a claim, 

may still anticipate that claim if the missing limitation is 
10 VIVINT, INC. v. ALARM.COM INC. 

“necessarily present, or inherent, in the single anticipating reference.” Id. (internal citation omitted).

While anticipation is proven based on the express and 

inherent teachings of a single prior art reference, an 

obviousness analysis reaches beyond the prior art reference and takes into account other considerations such as 

the level of ordinary skill in the art and any objective 

indicia of nonobviousness. See Cohesive Techs., Inc. v. 

Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Use 

of inherency in an obviousness context must therefore be 

“carefully circumscribed” because “that which may be 

inherent is not necessarily known and that which is 

unknown cannot be obvious.” Honeywell Int’l Inc. v. 

Mexichem Amanco Holding S.A., 865 F.3d 1348, 1354–55

(Fed. Cir. 2017) (internal quotation marks and citations 

omitted). Thus, while we have recognized that “inherency 

may supply a missing claim limitation in an obviousness 

analysis,” we have emphasized that “the limitation at 

issue necessarily must be present, or the natural result of 

the combination of elements explicitly disclosed by the 

prior art.” Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d

1186, 1194–96 (Fed. Cir. 2014) (emphasis added). 

The Board erred in finding that Johnson inherently 

discloses the terminal identifier limitation because its 

finding was not supported by substantial evidence. First, 

the Board based its finding on the rationale that “a terminal IP address . . . comports with [its] construction of 

‘terminal identifier.’” See Decision, 2017 WL 1096522, at 

*10. However, inherency requires more than agreement; 

inherency requires inevitability. See Schering, 339 F.3d 

at 1377; see also Par Pharm., 773 F.3d at 1196. Therefore, the Board’s evidence of merely “comport[ing]” with 

its claim construction, see Decision, 2017 WL 1096522, at 

*10, cannot constitute substantial evidence of the terminal identifier limitation being necessarily present in 

Johnson.
VIVINT, INC. v. ALARM.COM INC. 11

Second, the Board credited Dr. Rhyne’s testimony in 

supporting its inherency finding. See id. Dr. Rhyne, 

relying upon an Official Notice taken by the examiner 

during prosecution that data packets sent over the internet contained IP addresses, see J.A. 1623–24 (citing J.A. 

1192), testified that the use of IP addresses in Johnson 

“would have been obvious” to a person of ordinary skill in 

the art. J.A. 1624 (emphasis added). However, what 

would have been obvious to a skilled artisan is not a valid

consideration in an inherency analysis. See W.L. Gore & 

Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. 

Cir. 1983) (“Inherency and obviousness are distinct concepts.”) (citing In re Spormann, 363 F.2d 444, 448 (CCPA 

1966)). Even the Board acknowledged that the examiner’s Official Notice would have been permissible evidence

in an “obviousness evaluation.” See Decision, 2017 WL 

1096522, at *10 (emphasis added). Thus, Dr. Rhyne’s 

testimony, which was based on the examiner’s Official 

Notice, discussed obviousness and was not substantial 

evidence to support the Board’s inherency finding.

We therefore conclude that the Board’s finding that 

the terminal identifier limitation is inherently disclosed 

in Johnson was not supported by substantial evidence. 

However, we also conclude that the Board’s error was

harmless because the Board found, in the alternative, 

that Moriya independently taught the claimed terminal 

identifier and could serve as the basis for an obviousness 

rejection. We address this next. 

Vivint argues that the terminal identifier limitation is 

not disclosed in Moriya, because the Board incorrectly 

found Moriya’s model code was a terminal identifier. 

According to Vivint, this cannot be the case, because the 

’727 patent clearly distinguishes between a terminal 

identifier and a model name. Compare ’727 patent fig. 6, 

with id. fig. 8. It follows then, as Vivint contends, that 

the model name in the ’727 patent is analogous to the

model code in Moriya, which means that the terminal 
12 VIVINT, INC. v. ALARM.COM INC. 

identifier in the ’727 patent must refer to something else. 

Additionally, Vivint notes that the model code in Moriya 

would only allow the terminal to be identified generically, 

rather than uniquely. And, according to Vivint, the 

terminal identifier should be unique. 

Alarm.com responds that substantial evidence supported the Board’s finding that Moriya’s model code is a 

terminal identifier. Alarm.com points to claims 29 and 37 

as reciting a terminal identifier that is a “manufacturer 

model identifier.” See id. col. 38 ll. 35–36, col. 40 ll. 8–9. 

Additionally, the model code in Moriya, as Alarm.com 

explains, indicates a terminal’s display capabilities, which 

is a function that the terminal identifier performs in the 

’727 patent as well. Finally, Alarm.com argues that 

Vivint’s assertion that the terminal identifier should be 

unique is not required by the claims or specification.

We agree with Alarm.com that substantial evidence

supported the Board’s finding that Moriya teaches a 

terminal identifier. First, as the Board recognized, the 

claims themselves recite a terminal identifier that is a 

“manufacturer model identifier.” See Decision, 2017 WL 

1096522, at *12; see also ’727 patent col. 38 ll. 35–36, col. 

40 ll. 8–9. Second, the Board found that the model code in 

Moriya allows the system to determine the terminal’s 

display capabilities, which is the same functionality that 

the terminal identifier provides in the ’727 patent. See 

Decision, 2017 WL 1096522, at *11. And finally, the 

Board correctly reasoned that the ’727 patent claims and 

specification do not require that the terminal identifier be 

unique, contrary to Vivint’s assertions. See id. at *12. We 

therefore conclude that the Board’s finding that Moriya 

teaches the terminal identifier was supported by substantial evidence.

Vivint finally argues that Johnson does not teach the 

“generating . . . second control information” limitation. 

Vivint contends that the Board erred in giving the second 
VIVINT, INC. v. ALARM.COM INC. 13

control information the same meaning as the first control 

limitation. But the difference in claim terms, according to 

Vivint, means that the terms require different interpretations. Therefore, as Vivint argues, the first control information must be different from the second control 

information, and the specification makes clear that the 

contents of the requests must be different.

Alarm.com responds that the Board’s finding that 

Johnson discloses the “generating . . . second control 

information” limitation was supported by substantial 

evidence. According to Alarm.com, the ’727 patent does 

not require that the content of the second control information be different from the content of the first control 

information. Even if it did, Alarm.com argues that Johnson discloses additional control information that is 

transmitted with the second control information, which 

satisfies Vivint’s proposed interpretation.

We agree with Alarm.com that the Board’s finding 

that Johnson teaches the “generating . . . second control 

information” limitation was supported by substantial 

evidence. The Board found that Johnson’s “command

instruction” corresponded to the “first control information” when transmitted from the terminal to the data 

center, and then corresponded to the “second control 

information” when transmitted from the data center to 

the control unit. See id. at *14–15. Even if different

content were required, as Vivint urges, the Board found 

that Johnson teaches that “numerous operations” are 

undertaken by the data center after it receives the command instruction and before it retransmits the information to the control unit. See id. at *15 (citing Johnson

col. 7 l. 67–col. 8 l. 4). We therefore conclude that the 

Board’s finding that Johnson discloses the “generating . . . 

second control information” limitation was supported by 

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

On appeal, Vivint does not challenge the Board’s findings with respect to the combination of Johnson and 

Moriya or to the other prior art references. Accordingly, 

given that we have affirmed the Board’s findings that 

Moriya discloses a terminal identifier and that Johnson 

discloses “generating . . . second control information,” we 

conclude that the Board did not err in determining that 

the challenged claims would have been obvious over the 

asserted prior art combinations, which are all based on 

Johnson and Moriya. 

We have considered Vivint’s remaining arguments, 

but find them unpersuasive.

CONCLUSION

For the foregoing reasons, we affirm the decision of 

the Board.

AFFIRMED