SkyBell Technologies, Inc.

Patent Trials and Appeals Board

Jul 17, 2020

IPR2019-00443 (P.T.A.B. Jul. 17, 2020)

Trials@uspto.gov Paper 34
Tel: 571-272-7822 Entered: July 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

RING LLC,
Petitioner,
v.
SKYBELL TECHNOLOGIES, INC.,
Patent Owner.

IPR2019-00443
Patent 9,160,987 B1

Before JEFFREY S. SMITH, DANIEL J. GALLIGAN, and
KAMRAN JIVANI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting-in-Part and Denying-in-Part
Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
Ring LLC (“Petitioner”) filed a Petition requesting inter partes review
of claims 1–4, 10–13, 19–25, and 28 of U.S. Patent No. 9,160,987 B1 (“the
’987 patent,” Ex. 1001). Paper 1 (“Pet.”), 1–2. Skybell Technologies, Inc.
(“Patent Owner”) did not file a Preliminary Response. On August 5, 2019,
we instituted an inter partes review of all the challenged claims. Paper 13.
Patent Owner did not file a Response to the Petition. Instead, Patent Owner
filed a non-contingent Motion to Amend seeking cancellation of claims 1–4,
10–13, 19–25, and 28 and proposing substitute claims 31–46.1 Paper 20
(“Mot.”). Petitioner filed an Opposition to the Motion to Amend. Paper 23
(“Opp.”). Patent Owner filed a Reply in Support of the Motion to Amend,
and Petitioner filed a Sur-Reply in Opposition. Papers 25 (“Reply”), 30
(“Sur-Reply”). A hearing was held on April 16, 2020, and a transcript has
been entered into the record. Paper 33 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons discussed below, Patent Owner’s Motion to Amend is
granted with respect to cancellation of claims 1–4, 10–13, 19–25, and 28,
and denied with respect to proposed substitute claims 31–46.
A. Related Matters
The parties note the following related matter: SkyBell Technologies,
Inc. v. Ring Inc., No. 8:18-cv-00014 (C.D. Cal. filed Jan. 5, 2018). Pet. 2;
Paper 4, 2.

1 Although the Motion to Amend did not explicitly request cancellation of
claims 1–4, 10–13, 19–25, and 28, during the hearing, Patent Owner stated that
Patent Owner is cancelling the original claims being challenged and replacing
the original claims with the substitute claims filed in the Motion to Amend.
Tr. 14:20–19:17.
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B. Real Parties in Interest
Petitioner identifies the following real parties in interest: Ring LLC;
Ring of Security Limited; Ring of Security B.V.; Ring of Security Pty. Ltd.;
Ring of Security Asia Co., Ltd.; Ring Protect Inc.; Wireless Environment,
LLC; Wireless Environment Asia, LLC; Wireless Environment Lighting
Co., Ltd.; Wireless Environment UK Ltd.; Wireless Lighting Technologies,
LLC; Amazon.com Services, Inc.; and Amazon.com, Inc. Pet. 2. Patent
Owner identifies itself as the real party in interest. Paper 4, 1.
C. The ’987 Patent
The ’987 patent is generally directed to a doorbell communication
system. Ex. 1001, [57]. The ’987 patent specification discloses that
doorbell systems can include a doorbell and a chime. Id. The specification
discloses a doorbell system, comprising:
a doorbell comprising a button configurable to detect a
button press to indicate a presence of a visitor, a chime
communicatively coupled to the doorbell; a remote computing
device communicatively coupled to at least one of the doorbell
and the chime; and a sound emitted by a speaker of the chime in
response to the doorbell detecting an indication of a presence of
a visitor.
Id. at 5:3–10.
Figure 36 of the ’987 patent is reproduced below.
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Figure 36 illustrates an embodiment of a doorbell system, in which
chime 302 is in wireless communication with doorbell 202 and remote
computing device 204. Id. at 12:3–4.
The patent specification states “chime 302 can serve as a
communication bridge between the remote computing device 204 and the
doorbell 202.” Id. at 37:38–40. According to the patent specification, this
arrangement can be especially helpful when doorbell 202 cannot access
wireless network 308 of building 300 to which the doorbell is mechanically
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and/or electrically coupled. Id. at 37:40–43. The specification further
explains the following:
The chime 302 can be located inside the building 300, and thus,
is more likely to access the wireless network 308 of the building
300 (due to a superior signal strength of the wireless network 308
at the chime 302 compared to the signal strength at the doorbell
202, which can be located much farther from a router of the
wireless network 308).
Id. at 37:43–49. In certain embodiments, “the doorbell system can be used
to detect an indication of a presence of a visitor and thereby transmit the
indication from the doorbell 202 to the remote computing device 204 via the
chime 302.” Id. at 43:28–31. The specification further provides that
“methods can also include sending an alert 232a, such as a visitor alert 232a,
from the doorbell 202 to the chime 302 and thereby sending the visitor alert
232a from the chime 302 to the remote computing device 204.” Id. at
43:35–39.
D. Proposed Substitute Claims 31 and 32
Proposed substitute claims 31 and 32 are reproduced below, with
underlining indicating text inserted into original claims 1 and 19,
respectively.
31. A method of using a doorbell system comprising a
doorbell and a chime, wherein the doorbell system is configured
to be coupled to a building, the method comprising:
coupling communicatively the chime to a wireless
network of the building, to the doorbell, and to a remote
computing device;
detecting, by the doorbell, a trigger of a button of the
doorbell;
sending a visitor alert from the doorbell to the chime; and
sending the visitor alert from the chime to the remote
computing device such that the chime communicatively couples
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the doorbell to the remote computing device; and
receiving, by the doorbell system, a do not disturb setting
that determines whether the chime refrains from emitting sound.

32. A doorbell system comprising:
a chime;
a remote computing device communicatively coupled to
the chime;
a doorbell communicatively coupled with the remote
computing device via the chime;
a first communication from the doorbell to the chime,
wherein the first communication comprises a visitor alert; and
a second communication from the chime to the remote
computing device, wherein the second communication
comprises the visitor alert; and
a third communication from the remote computing device
to at least one of the chime and doorbell, wherein the third
communication comprises a do not disturb setting which
determines whether the chime refrains from emitting sound.
E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability for the
proposed substitute claims (Sur-Reply 4):
Claims Challenged 35 U.S.C. § Reference(s)/Basis
31, 32 § 103 Hwang2, Hershkovitz3
31, 32 § 103 Child4, Hershkovitz

2 U.S. Patent Publication No. 2015/0163463 A1, pub. June 11, 2015 (Ex.
1005, “Hwang”).
3 U.S. Patent No. 7,486,271 B2, issued Feb. 3, 2009 (Ex. 1030, “Hershkovitz”).
4 U.S. Patent Publication No. 2014/0267716 A1, pub. Sept. 18, 2014
(Ex. 1007, “Child”).
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II. ANALYSIS
A. Claim Construction
The Petition was accorded a filing date of December 17, 2018.
Paper 5, 1. In an inter partes review for a petition filed on or after
November 13, 2018, a claim “shall be construed using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent
Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37
C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37
C.F.R. § 42.100(b) (2019)).
We do not find it necessary to construe expressly any claim terms. Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013,
1017 (Fed. Cir. 2017) (only terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy).
B. Level of Ordinary Skill in the Art
Petitioner’s declarant, Dr. Vijay Madisetti, testifies that a person of
ordinary skill in the art of the ’987 patent would have had
a bachelor’s degree in Electrical Engineering, Computer
Engineering, or Computer Science, or equivalent training, as
well as at least one year of technical experience in the relevant
field. Lack of work experience can be remedied by additional
education or training, and vice versa.
Ex. 1003 ¶ 28 (cited at Pet. 9). Patent Owner does not challenge this
assessment. We adopt Dr. Madisetti’s articulation of the level of skill in the
art, with the exception of the language “at least,” which introduces
ambiguity.

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A. Cancellation of Claims 1–4, 10–13, 19–25, and 28
Patent Owner filed a Motion to Amend, requesting that challenged
independent claims 1 and 19 be replaced with proposed substitute
independent claims 31 and 32. Mot. 1. Patent Owner also proposes
amending challenged dependent claims 2–4, 10–13, 20–25, and 28 to reflect
proper claim dependency from their respective parent claim. Id. at 2.
During the hearing, Patent Owner confirmed that the Motion to Amend
canceled challenged claims 1–4, 10–13, 19–25, and 28 and is not contingent
on a finding by this Board of unpatentability of these claims. Rather, the
non-contingent Motion to Amend seeks to replace the challenged claims
with substitute claims 31–46. See Tr. 14:20–16:3.
“A motion to amend may cancel a challenged claim . . . .” 37 C.F.R.
§ 42.121(a)(3); see also 35 U.S.C. § 316(d)(1)(A). Accordingly, we grant
Patent Owner’s Motion to Amend with respect to the request to cancel
challenged claims 1–4, 10–13, 19–25, and 28.
In Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the
Federal Circuit addressed the burden of persuasion that the Board applies when
considering the patentability of substitute claims presented in a motion to
amend filed under 35 U.S.C. § 316(d) in an inter partes review. The lead
opinion concludes with the following:
The only legal conclusions that support and define the judgment of
the court are: (1) the PTO has not adopted a rule placing the burden
of persuasion with respect to the patentability of amended claims on
the patent owner that is entitled to deference; and (2) in the absence
of anything that might be entitled to deference, the PTO may not
place that burden on the patentee.
Aqua Prods., 872 F.3d at 1327.
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In accordance with Aqua Products, Patent Owner does not bear the
burden of persuasion to demonstrate the patentability of substitute claims
presented in a motion to amend. Rather, the burden of persuasion ordinarily
will lie with Petitioner to show that any proposed substitute claims are
unpatentable by a preponderance of the evidence. The Board itself also may
justify any finding of unpatentability by reference to evidence of record in the
proceeding under limited circumstances, for example, when a Petitioner ceases
to participate. Hunting Titan, Inc. v. DyanEnergetics Europe GmbH, IPR2018-
00600, Paper 67, 25–26 (PTAB July 6, 2020) (precedential) (explaining that the
Board may raise grounds of unpatentability not raised, or insufficiently
developed by, a petitioner “for example, where the petitioner ceased to
participate in the proceeding”). Ultimately, the Board determines whether
substitute claims are unpatentable by a preponderance of the evidence based on
the entirety of the record, including any opposition made by the Petitioner. See
Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, -01130, Paper 15 at 4
(PTAB Feb. 25, 2019) (precedential). Thus, for example, if the entirety of the
evidence of record before the Board is in equipoise as to the unpatentability of
one or more substitute claims, the Board will grant the motion to amend with
respect to such claims, and the Office will issue a certificate incorporating those
claims into the patent at issue.
B. Analysis of Proposed Substitute Claims 31 and 32 as Obvious over
the Combination of Hwang and Hershkovitz
Petitioner, relying on testimony of Dr. Vijay Madisetti, contends that
the combination of Hwang and Hershkovitz renders proposed substitute
claims 31 and 32 obvious. Opp. 21–25; Ex. 1034; see also Ex. 1003
(Dr. Madisetti’s testimony regarding the limitations of claims 1 and 19
incorporated into proposed substitute claims 31 and 32).
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1. Description of Prior Art References
Hwang (Ex. 1005)
Hwang is directed to a computer-implemented method for operating a
doorbell camera. Ex. 1005 ¶ 5. Hwang provides that the disclosed system may
“include doorbell unit 105, chime unit 110, control unit 120, computer
device 125, database 130, and a network 115 that allows a doorbell unit 105,
chime unit 110, control unit 120, computing device 125, and database 130 to
communication with one another.” Id. ¶ 26. Hwang states “a user may desire
to receive an alert when someone enters a predefined area.” Id. ¶ 25. Hwang
further discloses the following:
The present systems and methods may detect when a person
approaches a door and/or presses a doorbell button and providing
notification messages upon detecting the person at the door.
Moreover, the systems and methods described herein may
provide a doorbell camera to capture an image of the person that
approaches a door and/or presses a doorbell button.
Id. Hwang describes one embodiment in which “communication module
310 may receive, at a chime unit, data associated with capturing an image
using a camera in a doorbell unit.” Id. ¶ 40. Furthermore, “communication
module 310 may send, from the chime unit, the requested one or more
images to a computing device over a data communication network.” Id.
Hershkovitz (Ex. 1030)
Hershkovitz discloses a security system user interface with a video
display. Ex. 1030, Title. Figure 1 of Hershovitz is reproduced below.
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Figure 1 of Hershkovitz above shows system 10 with security system
control panel 14, user interface device 12, graphical display 20, and external
programming device 13, which may be a laptop computer. Id. at 3:13–27.
System 10 also includes video camera 16’, doorbell switch 16”, and doorbell
unit 17, which may be a conventional doorbell, such as a bell, chime, or
buzzer. Id. at 3:29–36, 4:66–67. In one operation mode selected using user
programming interface 13, the doorbell unit may be muted so as not to
disturb the occupants. Id. at 5:54–55. Such a mute function may be set
according to a preprogrammed time of day schedule, or manually selected
on or off. Id. at 5:55–57.
2. Analysis of Proposed Substitute Claim 31
Proposed substitute claim 31 recites a “method of using a doorbell
system comprising a doorbell and a chime, wherein the doorbell system is
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configured to be coupled to a building, the method comprising.” Petitioner
contends “Hwang’s method of using a system that includes a doorbell unit
and a chime unit, where the doorbell unit and the chime unit are configured
to be respectively coupled to exterior and interior walls of a building,”
teaches a “method of using a doorbell system comprising a doorbell and a
chime, wherein the doorbell system is configured to be coupled to a
building” as claimed. Pet. 13 (citing Ex. 1005 ¶¶ 8, 34; Ex. 1003, 27–29).
Hwang discloses a method of using a system that includes a “doorbell
unit” and a “chime unit,” both of which are configured to be mounted to
walls of a dwelling. Ex. 1005, Abstract, ¶¶ 8, 34. We determine that Hwang
teaches “[a] method of using a doorbell system comprising a doorbell and a
chime, wherein the doorbell system is configured to be coupled to a
building.”
Claim 31 recites “coupling communicatively the chime to a wireless
network of the building, to the doorbell, and to a remote computing device.”
Petitioner contends that a skilled artisan “would have considered a local area
network that is wireless and utilized by devices inside of a dwelling to be a
wireless network of the dwelling.” Pet. 14 (citing Ex. 1003, 30–31).
Petitioner also contends that communicatively coupling the chime unit to a
wireless local area network via 802.11, to the doorbell unit via doorbell wire,
and to a computing device and control unit such as a laptop or smartphone as
disclosed by Hwang, teaches “coupling communicatively the chime to a
wireless network of the building, to the doorbell, and to a remote computing
device.” Pet. 16 (citing Ex. 1003, 29–34).
Hwang discloses that the chime unit inside the dwelling may be
communicatively coupled to a local area network. Ex. 1005 ¶ 32; see id.
¶ 39 (disclosing that the chime unit can be coupled to the local area network
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via wireless network connections). Hwang also discloses that “[d]oorbell
unit 105 may connect to chime unit 110 using doorbell wiring 155.”
Ex. 1005 ¶ 27; see id. ¶ 9. Hwang discloses that “network 115” allows
“doorbell unit 105, chime unit 110, control unit 120, computing device 125,
and database 130” to “communicate with one another.” Id. ¶ 26; see id.
¶¶ 10, 32 (stating that “data received at the chime unit may be sent to a
control unit over a data communication network,” such as “802.11”).
Hwang discloses that “doorbell unit 105 may communicate with control unit
120 . . . via a communication path that includes . . . chime unit 110, and
network 115.” Ex. 1005 ¶ 32. We determine that Hwang’s disclosure of the
chime unit coupled to the local area network via wireless connections and
Hwang’s disclosure of the network allowing the chime unit, the doorbell
unit, and the remote device to communicate with one another teach
“coupling communicatively the chime to a wireless network of the building,
to the doorbell, and to a remote computing device” as claimed.
Claim 31 recites “detecting, by the doorbell, a trigger of a button of
the doorbell.” Petitioner contends “Hwang discloses this limitation because
it teaches that a monitoring module of the doorbell unit ‘may detect a press
of a button on the doorbell unit (e.g., a press of button 135).’” Pet. 16–17
(quoting Ex. 1005 ¶ 38) (citing Ex. 1003, 34–36). We determine that
Hwang’s disclosure of a monitoring module detecting a press of a button on
a doorbell unit teaches “detecting, by the doorbell, a trigger of a button of
the doorbell” as claimed.
Claim 31 recites “sending a visitor alert from the doorbell to the
chime.” Petitioner contends “sending an alert in the form of an image of a
visitor who pressed the doorbell button from the doorbell unit to the chime
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unit,” as disclosed by Hwang, teaches “sending a visitor alert from the
doorbell to the chime.” Pet. 19 (citing Ex. 1003, 36–39).
Hwang discloses that “a user may desire to receive an alert when
someone enters a predefined area,” such as the area around “a door of his or
her house, office, or place of business.” Ex. 1005 ¶ 25. Hwang further
discloses “an image of the person that approaches a door and/or presses a
doorbell button” may be captured by a “doorbell camera” and “relayed to
one or more devices where a user is able to view the captured image.” Id.
Hwang also discloses, with respect to Figure 5, that “[a]t block 520, one or
more images may be captured using the doorbell camera upon detecting a
press of a button on the doorbell” and “[a]t block 530, data associated with
capturing one or more images using the doorbell camera may be sent to one
or more devices over the doorbell wiring (e.g., sent to a chime unit).” Id.
¶ 46; Fig. 5. We determine that Hwang’s disclosure of capturing an image
of a person who presses a button on a doorbell and sending the captured
image to a chime unit teaches “sending a visitor alert from the doorbell to
the chime” as claimed.
Claim 31 recites “sending the visitor alert from the chime to the
remote computing device such that the chime communicatively couples the
doorbell to the remote computing device.” Petitioner contends Hwang
discloses that “the chime unit communicatively couples the doorbell unit to
the control unit by relaying the image(s) of the visitor from the doorbell unit
to the control unit.” Pet. 21 (citing Ex. 1003, 42). Petitioner further
contends “sending the images (visitor alert) captured by the doorbell unit
from the chime unit to the control unit (remote computing device) such that
the chime unit communicatively couples the doorbell unit to the control
unit,” as disclosed by Hwang, teaches “sending the visitor alert from the
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chime to the remote computing device such that the chime communicatively
couples the doorbell to the remote computing device.” Id. at 22 (citing
Ex. 1003, 39–43).
Hwang discloses, with respect to Figure 6, that “[a]t block 610, the
data received at the chime unit may be sent to a control unit over a data
communication network.” Ex. 1005 ¶ 48, Fig. 6. Hwang also discloses that
“control unit 120 include[s] a dedicated home automation computing device
(e.g., wall-mounted controller), a personal computing device (e.g., laptop,
desktop, etc.), a mobile computing device (e.g., tablet computing device,
smartphone, etc.), and the like.” Id. ¶ 26. Hwang further discloses:
[C]ommunication module 310 may receive, at a chime unit, data
associated with capturing an image using a camera in a doorbell
unit. The data may be sent over doorbell wiring between the
chime unit and the doorbell unit (e.g., doorbell wiring 155).
Communication module 310 may send the data received at the
chime unit to a control unit over a data communication network.
For example, data received at chime unit 110 may be sent to
control unit 120 over network 115.
Id. ¶ 40. We determine that Hwang’s disclosure of sending captured images
from the doorbell unit to the chime unit and then sending the captured
images from the chime unit to the control unit teaches “sending the visitor
alert from the chime to the remote computing device such that the chime
communicatively couples the doorbell to the remote computing device.”
Claim 31 recites “receiving, by the doorbell system, a do not disturb
setting that determines whether the chime refrains from emitting sound.”
Petitioner contends that this limitation is taught by the combination of
Hwang and Hershkovitz. Opp. 21–25.
Petitioner contends that Hwang teaches “receiving, by the doorbell
system, a . . . setting that determines” a function of the doorbell system as
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claimed in disclosing a doorbell system in which a remote device
communicates user settings of a function of the doorbell system, such as a
user request to capture an image using the camera in the doorbell unit.
Opp. 21–22 (citing Ex. 1005 ¶¶ 26, 32, 35, 40, 49, 50; Ex. 1034, 23–28).
Dr. Madisetti testifies that Hwang discloses a doorbell system that includes a
doorbell unit, a chime unit, and a control unit (remote device) that
communicate via a communication path. Ex. 1034, 23–24 (citing Ex. 1005
¶ 32, Fig. 1). Dr. Madisetti testifies that the control unit of Hwang allows a
user to control a function of the doorbell unit by sending a request from the
control unit to the chime unit and the doorbell unit. Id. at 25–28 (citing
Ex. 1005 ¶¶ 10, 31, 40, 49, 50, Figs. 1, 7).
Hwang discloses a chime unit receiving a request from the control
unit to capture an image using the camera in the doorbell unit and sending
the request to the doorbell unit, where the control unit is a remote device.
Ex. 1005 ¶ 10; see id. ¶¶ 31, 40, 49, 50, Figs. 1, 7. We rely on Dr.
Madisetti’s testimony and supporting evidence and determine that Hwang’s
disclosure of a doorbell system comprising a chime unit and a doorbell unit,
in which the chime unit receives a request to capture an image from the
remote device and sends the request to the doorbell unit, teaches “receiving,
by the doorbell system, a . . . setting that determines” a function of the
doorbell system as claimed.
Petitioner contends that Hershkovitz teaches “a do not disturb setting
that determines whether the chime refrains from emitting sound” as claimed
in disclosing that a user can utilize a laptop to select an operation mode in
which the doorbell unit may be muted so as not to disturb occupants.
Opp. 23 (citing Ex. 1030, 5:50–58; Ex. 1034, 29–31). Dr. Madisetti testifies
that Hershkovitz teaches a system that includes a doorbell switch (i.e., a
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pushbutton), a doorbell (i.e., a chime), a control panel, and a user
programming interface (i.e., a remote computer device such as a laptop).
Ex. 1034, 29–31 (2:1–2, 3:62–64, Fig. 1). Dr. Madisetti testifies that
Hershkovitz teaches a user providing input through the remote laptop to
select a do not disturb setting that mutes the doorbell (chime). Id. at 30–31
(citing Ex. 1030, 5:50–58).
Figure 1 of Hershkovitz shows system 10 including doorbell switch
16” that can be pressed by a user, doorbell unit 17 (which can be a chime),
control panel 14, and user programming interface 13 (which can be a
laptop). Ex. 1030, 3:56–58, 4:66–67, 3:33–38, 3:25–27. Hershkovitz
discloses that “control panel 14 is thus able to control operation of the
doorbell. For example, in one operation mode selected using the user
programming interface 13, the doorbell unit may be muted so as not to
disturb the occupants.” Id. at 5:52–55. We rely on Dr. Madisetti’s
testimony and supporting evidence and determine that Hershkovitz’s
disclosure of selecting an operation mode using a remote laptop to mute the
doorbell unit so as not to disturb the occupants teaches a doorbell system
receiving a do not disturb setting from a remote laptop that determines
whether the chime refrains from emitting sound.
Petitioner contends that Hwang’s teaching of receiving a
communication at a chime unit from a remote computing device, where the
communication comprises a request that determines the functionality of the
chime unit, in view of Hershkovitz’s teaching of receiving from a remote
device a do not disturb setting that mutes a chime, amounts to applying a
well-known setting to a doorbell system ready for improvement. Opp. 25
(citing KSR, 550 U.S. at 417). Dr. Madisetti testifies that a person of
ordinary skill in the art would have incorporated the do not disturb setting of
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Hershovitz in Hwang’s doorbell system to yield the known and predictable
results of preventing visitors from disturbing the occupant when a young
child is sleeping, or late at night, or for times when the occupant wants peace
and quiet. Ex. 1034 ¶¶ 19–20 (citing Ex. 1030, 5:50–58; Ex. 1032, 4:36–38;
Ex. 1033, 1:28–30; Ex. 1024, 1–3).
We rely on Dr. Madisetti’s testimony and supporting evidence in
determining that substituting the known request to capture an image in the
doorbell system of Hwang with the known do not disturb setting taught by
Hershkovitz does no more than yield the predictable result of causing the
chime of Hwang’s doorbell system to receive a do not disturb setting from a
remote device that causes the chime to refrain from emitting sound as taught
by Hershkovitz. Ex. 1034 ¶¶ 19–21 (citing Ex. 1030, 5:50–58; Ex. 1032,
4:36–38; Ex. 1033, 1:28–30; Ex. 1024, 1-3); KSR, 550 U.S. at 416 (“[W]hen
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.”).
Patent Owner contends that Hwang and Hershkovitz are not
analogous art because Hwang and Hershkovitz “could not be more
different.” Reply 7–8 (citing Ex. 2005 ¶ 13). Petitioner contends that the
relevant inquiry is not whether the references are analogous to each other,
but whether the references are analogous to the claimed invention. Sur-
reply 4–6 (citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)).
Petitioner contends that the field of endeavor of the ’987 patent is doorbell
systems and methods. Opp. 5 (citing Ex. 1001, 3:3–6). Petitioner contends
that both Hwang and Hershkovitz are in the same field of endeavor as the
’987 patent. Opp. 5–6 (citing Ex. 1005 ¶ 24; Ex. 1030, 2:61–64). We
determine that the field of endeavor of the ’987 patent is doorbell systems
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and methods and that Hwang and Hershkovitz are also in the field of
endeavor of doorbell systems and methods. See Ex. 1001, 3:3–6; Ex. 1005
¶ 24; Ex. 1030, 2:61–64.
Patent Owner contends that the doorbell of Hershkovitz is different
than the doorbell of Hwang because the doorbell and chime of Hwang
communicate, but the corresponding devices in Hershkovitz (the doorbell
switch and doorbell unit) do not. Reply 8 (citing Ex. 1030, 5:50–52).
According to Patent Owner, Hershkovitz teaches that all of the components
are separately connected to the user interface and then to the control panel,
which controls communications. Id. (citing Ex. 1030, 5:59–61). Patent
Owner contends that Hershkovitz teaches that all of its standard
functionality, including using the mute feature, are performed at the control
panel, not the laptop. Id. at 8–9 (citing Ex. 1030, 3:13–27). According to
Patent Owner, “[g]iven the different problems Hershkovitz and Hwang are
focused on solving, a POSITA would not be motivated to combine the
references and would have little expectation of success if such a combination
were attempted.” Id. (citing Ex. 2005 ¶¶ 13–20).
Petitioner contends that the Petition relies on Hwang to teach the
structural aspects of the limitation and relies on Hershkovitz to teach a mute
function that silences the chime. Sur-reply 7–8 (citing Opp. 21–23).
Petitioner contends that a “POSITA would have been specifically motivated
to incorporate Hershkovitz’s do not disturb setting into Hwang’s doorbell
system.” Opp. 23–24. Petitioner contends that a person of ordinary skill in
the art would have had a reasonable expectation of success because such
settings were common in doorbell systems, would not change the
functionality of either Hwang’s doorbell system or Hershkovitz’s, do not
disturb setting, and would utilize standard protocols and components.
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Opp. 24–25 (citing Ex. 1034 ¶¶ 21–22; Ex. 1030, 5:50–58; Ex. 1032, 4:36–
38, 8:15–17; Ex. 1033, 1:28–30; Ex. 1031, 65:54–63; Ex. 1005 ¶¶ 51–54).
Dr. Madisetti testifies that “combining Hershkovitz and Hwang does
not alter the functionality of the do not disturb setting or the doorbell
system” and that “using interchangeable components and standardized
protocols,” such as known do not disturb settings, wireless techniques,
processor, input/output controller, memory, and operating system, “would
have been within the technical skill of a POSITA. Thus, there was a
reasonable expectation of success in implementing the combination of
Hwang and Hershkovitz.” Ex. 1034 ¶ 21 (citing Ex. 1030, 5:50–58; Ex.
1032, 4:36–38, 8:15–17; Ex. 1033, 1:28–30; Ex. 1031, 65:54–63; Ex. 1005
¶¶ 51–54). We rely on Dr. Madisetti’s testimony and supporting evidence in
determining that the known do not disturb function of Hershkovitz and the
known doorbell system of Hwang would have been implemented using
standardized protocols and interchangeable components and that working
with such standardized protocols and interchangeable components would
have been within the technical skill of a person of ordinary skill in the art at
the time of invention, resulting in a reasonable expectation of success in
combining the known do not disturb function with the known doorbell
system.
Patent Owner contends that “receiving, by the doorbell system, a do
not disturb setting that determines whether the chime refrains from emitting
sound” as claimed requires the do not disturb setting to be received by both
the doorbell and the chime because the preamble recites the “doorbell
system comprising a doorbell and a chime.” Reply 9–11. Patent Owner
contends that Hershkovitz sends the do not disturb setting to the doorbell
unit, or “chime” as claimed, but not to the doorbell switch, or “doorbell” as
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claimed. Id. (citing Ex. 1030, 5:50–61; Ex. 2005 ¶¶ 21–25).
Petitioner contends that Patent Owner’s narrow construction, that both
the doorbell and the chime must receive the do not disturb setting, is not
required by the language of the claim. Sur-reply 9. Petitioner also contends
that the specification of the ’987 patent describes doorbell system 200
receiving a communication when only one component of the doorbell
system receives such communication. Id. at 9–10 (citing Ex. 1001, 31:47–
59, 34:31–33, 32:10–12, 34:61–65, 35:56–61, 42:61–64).
We do not agree with Patent Owner’s narrow construction, but, even
were we to accept Patent Owner’s narrow construction, we disagree with
Patent Owner’s contention that Hershkovitz alone does not teach both the
doorbell and the chime receiving the do not disturb setting, because this is
not the relevant inquiry. Each reference must be read, not in isolation, but
for what it fairly teaches in combination with the prior art as a whole. See In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As discussed above, we determine Hwang teaches “coupling
communicatively the chime to a wireless network of the building, to the
doorbell, and to a remote computing device” as claimed. Hwang further
teaches sending a request to perform a function from a remote device to a
chime, then sending the request from the chime to the doorbell unit. Ex.
1005 ¶¶ 10, 31, 32, 35, 40, 49, 50, Figs. 1, 3, and 7; Ex. 1034, 15–20.
Hershkovitz teaches sending a request to perform a do not disturb function
from a remote device to a chime. Ex. 1030, 5:50–58, Fig. 1; Ex. 1034, 21–
23. Sending a request to perform a function from a remote device to a
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chime, and from the chime to a doorbell as taught by Hwang, where the
request is a request to perform a do not disturb function as taught by
Hershkovitz, teaches sending the do not disturb request to both the doorbell
and the chime as claimed, even under Patent Owner’s narrower construction.
We determine proposed substitute claim 31 would have been obvious
over the combination of Hwang and Hershkovitz. We deny Patent Owner’s
request to enter proposed substitute claim 31 because claim 31 is
unpatentable under 35 U.S.C. § 103.
3. Analysis of Proposed Substitute Claim 32
Proposed substitute claim 32 recites a “doorbell system.” Petitioner
contends that Hwang’s disclosure of a system that includes a doorbell unit
teaches the “doorbell system” as claimed. Pet. 25–26 (citing Ex. 1005, Fig.
1, Abstract, ¶ 26; Ex. 1003, 54). Hwang discloses systems for operating a
doorbell camera, including a doorbell unit wired to doorbell wiring. Ex.
1005, Title, Abstract. We determine that Hwang’s system that includes a
doorbell unit teaches a “doorbell system” as claimed.
Claim 32 recites “a chime.” Petitioner contends that Hwang’s
disclosure of a chime unit teaches the “chime” as claimed. Pet. 26 (citing
Ex. 1005, Fig. 1, Abstract, ¶ 26; Ex. 1003, 55). Figure 1 of Hwang shows
chime unit 110. Ex. 1005, Fig. 1, ¶ 26. We determine that Hwang’s chime
unit teaches “a chime” as claimed.
Claim 32 recites “a remote computing device communicatively
coupled to the chime.” Petitioner contends that this limitation is taught by
Hwang’s disclosure of a chime unit communicatively coupled via a network
to a control unit such as a laptop, such that data received at the chime unit
may be sent to the control unit over the network. Pet. 27 (citing Ex. 1005,
Fig. 1, ¶¶ 10, 26; Ex. 1003, 55–57). Figure 1 of Hwang shows chime unit
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110, control unit 120, and network 115 that allows chime unit 110 and
control unit 120 to communicate with one another. Ex. 1005, Fig. 1, ¶ 26.
Hwang discloses that examples of control unit 120 include a personal
computing device such as a laptop and a mobile computing device such as a
tablet or a smartphone. Id. ¶ 26. We determine that Hwang’s disclosure of a
network that allows a chime unit and a laptop to communicate with each
other teaches “a remote computing device communicatively coupled to the
chime” as claimed.
Claim 32 recites “a doorbell communicatively coupled with the
remote computing device via the chime.” Petitioner contends that this
limitation is taught by Hwang’s disclosure of a doorbell unit that
communicates with the control unit via a communication path that includes
the chime unit and the network. Pet. 27–29 (citing Ex. 1005, Fig. 1, ¶¶ 26,
27, 32; Ex. 1003, 57–58). Hwang discloses that “doorbell unit 105 may
communicate with control unit 120 . . . via a communication path that
includes . . . chime unit 110, and network 115.” Ex. 1005 ¶ 32. We
determine that Hwang’s disclosure of doorbell unit communicating with the
control unit via a path that includes the chime teaches “a doorbell
communicatively coupled with the remote computing device via the chime”
as claimed.
Claim 32 recites “a first communication from the doorbell to the
chime, wherein the first communication comprises a visitor alert.”
Petitioner contends that this limitation is taught by Hwang for the same
reasons given in the analysis of “sending a visitor alert from the doorbell to
the chime” as recited in claim 31. Pet. 29 (citing Ex. 1003, 58–62). Dr.
Madisetti testifies that Hwang teaches this limitation in disclosing capturing
images upon detecting a press of a button on a doorbell unit and sending the
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captured images from the doorbell unit to the chime unit. Ex. 1003, 58–62
(citing Ex. 1005 Fig. 5, ¶¶ 9, 25, 38, 39, 44–46).
Hwang teaches that “a user may desire to receive an alert when
someone enters a predefined area,” such as the area around “a door of his or
her house, office, or place of business.” Ex. 1005 ¶ 25. Hwang further
explains “an image of the person that approaches a door and/or presses a
doorbell button” may be captured by a “doorbell camera” and “relayed to
one or more devices where a user is able to view the captured image.” Id.
We determine that Hwang’s disclosure of capturing images upon detecting a
press of a button on a doorbell unit and sending the captured images from
the doorbell unit to the chime unit teaches “a first communication from the
doorbell to the chime, wherein the first communication comprises a visitor
alert” as claimed.
Claim 32 recites “a second communication from the chime to the
remote computing device, wherein the second communication comprises the
visitor alert.” Petitioner contends that Hwang teaches this limitation in
disclosing that the doorbell unit sends the captured images to the chime unit
and then the chime unit sends the captured images to the control unit.
Pet. 29–30 (citing Ex. 1005, Fig. 6, ¶¶ 40, 48; Ex. 1003, 62–64). Hwang
discloses that “data associated with capturing an image using a camera in a
doorbell unit may be received, at a chime unit . . . . [T]he data received at
the chime unit may be sent to a control unit over a data communication
network.” Ex. 1005 ¶ 48, Fig. 6; see id. ¶ 40. We determine that Hwang’s
disclosure of sending images captured by the camera in the doorbell unit
from the chime to the control unit teaches “a second communication from
the chime to the remote computing device, wherein the second
communication comprises the visitor alert” as claimed.
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Claim 32 recites “a third communication from the remote computing
device to at least one of the chime and doorbell, wherein the third
communication comprises a do not disturb setting which determines whether
the chime refrains from emitting sound.” Petitioner relies on Hwang to
teach a communication from the remote computing device to the chime and
to the doorbell. Opp. 21–22 (citing Ex. 1005 ¶¶ 26, 31, 32, 35, 40, 49, 50,
Figs. 1, 7; Ex. 1034, 23–28). Petitioner relies on Hershkovitz to teach a do
not disturb setting which determines whether the chime refrains from
emitting sound. Opp. 23 (citing Ex. 1030, 5:50–58; Ex. 1034, 29–31).
Petitioner contends that sending a communication from the remote
communication device to the chime, and from the chime to the doorbell, as
taught by Hwang, where the communication is a do not disturb setting which
determines whether the chime refrains from emitting sound as taught by
Hershkovitz, yields the predictable result of silencing the chime as taught by
Hershkovitz. Opp. 23–25.
Hwang discloses control unit 120 includes an application 165 that
allows a user to interface with a function of the doorbell unit. Ex. 1005,
Fig. 1, ¶ 31. Hwang discloses that a function of the doorbell unit is
capturing images. Id. ¶¶ 10, 40, 50. Hwang discloses data module 150 of
chime unit 110 receiving a request to perform the function of capturing
images using a camera in a doorbell unit and sending the request to the
doorbell unit. Ex. 1005, Figs. 1–3, 7, ¶¶ 49–50. Hershkovitz discloses that a
user-controlled function of a doorbell is a do not disturb setting to mute the
doorbell unit, which may be selected by a user in an interface such as a
laptop. Ex. 1030, 5:50–58, 3:25–27. We determine that sending a request to
perform a function from a control unit to a doorbell unit as taught by Hwang,
where the function is a do not disturb setting to mute the doorbell unit as
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taught by Hershkovitz, yields the predictable result of silencing the doorbell
unit as taught by Hershkovitz.
Patent Owner relies on the same arguments for the patentability of
claim 32 as those presented for claim 31, which we find unpersuasive as
discussed above in our analysis of claim 31. Reply 7–11. Patent Owner
further contends that Hershkovitz does not teach the use of a “remote
computing device” as recited in claim 32 to use the mute functionality.
Reply 11. According to Patent Owner, the only disclosure of using a laptop
in Hershkovitz is for initial security setup of specifying a floor plan and
placing detectors, not as a control device. Id. at 12 (citing Ex. 1030, 3:13–
27; Ex. 2005 ¶¶ 26–30).
Hershkovitz discloses that, “[g]iven the limitations and comfort level
when using a small touch screen as a programming interface for specifying a
floor plan and placing the detectors therein, an external programming
interface 13, such as a laptop computer . . . may be used.” Ex. 1030, 3:23–
27. Hershkovitz further discloses that “in one operation mode selected using
the programming interface 13, the doorbell unit may be muted so as not to
disturb the occupants.” Id. at 5:53–55. Patent Owner’s contention that
Hershkovitz does not teach using a laptop to select the mute function is
inconsistent with Hershkovitz’s disclosure of using interface 13, such as a
laptop computer, to select an operation mode for muting the doorbell unit so
as not to disturb the occupants.
We determine proposed substitute claim 32 would have been obvious
over the combination of Hwang and Hershkovitz. We deny Patent Owner’s
request to enter proposed substitute claim 32 because claim 32 is
unpatentable under 35 U.S.C. § 103.
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C. Analysis of Proposed Substitute Claims 31 and 32 as Obvious over
the Combination of Child and Hershkovitz
1. Child (Ex. 1007)
Child discloses a system including an entry component with a sensor
to detect a presence of a person at an entry to a structure, and a camera.
Ex. 1007, Abstract. Child discloses that the entry component communicates
image and sensor data to a control panel and receives control information
from the control panel. Id. Child discloses that the control panel sends the
image data to a mobile wireless device. Id.
2. Analysis of Proposed Substitute Claim 31
Proposed substitute claim 31 recites a “method of using a doorbell
system comprising a doorbell and a chime, wherein the doorbell system is
configured to be coupled to a building.” Petitioner contends Child teaches
this limitation in disclosing a doorbell next to a door on the exterior of a
structure and a control panel within the structure that plays a chime when the
doorbell is depressed. Pet. 48–51 (citing Ex. 1007, Figs. 2, 3, 5, 7, ¶¶ 35, 36,
41, 65, 75, 93, 94; Ex. 1003, 98–104). Child discloses that “control panel
220 may detect when doorbell 212 is depressed. In response, the control
panel may play a chime . . . .” Ex. 1007 ¶ 36, Fig. 2. We determine that
Child’s disclosure of a control panel that plays a chime when the doorbell is
depressed teaches a “method of using a doorbell system comprising a
doorbell and a chime, wherein the doorbell system is configured to be
coupled to a building” as claimed.
Claim 31 recites “coupling communicatively the chime to a wireless
network of the building, to the doorbell, and to a remote computing device.”
Petitioner contends Child teaches this limitation in disclosing a control panel
communicatively coupled to a wireless network, to a doorbell, and to remote
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electronic devices. Pet. 51–55 (citing Ex. 1007, Figs. 3, 5, ¶¶ 54, 68, 75, 76,
81, 83, 92; Ex. 1003, 104–112). As discussed above, Child discloses a
control panel that plays a chime when a doorbell is depressed. Child
discloses that “control panel 520 may communicate with [remote]
components . . . using network 502 [which] may include a wireless
communication system.” Ex. 1007 ¶ 68, Fig. 5. Child discloses that the
remote components include electronic devices 504, 506. Id. ¶ 76, Fig. 5.
We determine that Child’s disclosure of a control panel that plays a chime
when a doorbell is depressed and communicates with electronic devices
using a network that includes a wireless communication system teaches
“coupling communicatively the chime to a wireless network of the building,
to the doorbell, and to a remote computing device” as claimed.
Claim 31 recites “detecting, by the doorbell, a trigger of a button of
the doorbell.” Petitioner contends that Child teaches this limitation in
disclosing a doorbell that is activated when the doorbell button is depressed.
Pet. 55–57 (citing Ex. 1007, Fig. 7, ¶¶ 30, 36, 61, 94–96; Ex. 1003, 112–
114). Child discloses “doorbell 412 includes a depressible button 415 that,
when depressed, causes a chime . . . to indicate the presence of someone at
the door.” Ex. 1007 ¶ 61. We determine Child’s disclosure of a doorbell
including a button that, when depressed, causes a chime to play teaches,
“detecting, by the doorbell, a trigger of a button of the doorbell” as claimed.
Claim 31 recites “sending a visitor alert from the doorbell to the
chime.” Petitioner contends that Child teaches this limitation in disclosing
sending images of a person who presses a doorbell to a chime. Pet. 57–59
(citing Ex. 1007, Fig. 7, ¶¶ 6, 7, 26, 36, 44, 95–97, 101, 103; Ex. 1003, 114–
119). Child discloses that “a doorbell . . . may be used to determine
someone is present.” Ex. 1007 ¶ 95. Child discloses that an “image capture
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system may . . . be used to capture one or more images of the location . . .
where it is detected that a person is likely present.” Id. ¶ 96; see id. ¶ 41 (A
“camera may be . . . integrated with a . . . doorbell.”). Child discloses that
the “images may be sent to an automation system control panel.” Id. ¶¶ 97,
36. We determine Child’s disclosure of capturing and sending an image of a
person who presses a doorbell to the control panel teaches “sending a visitor
alert from the doorbell to the chime” as claimed.
Claim 31 recites “sending the visitor alert from the chime to the
remote computing device such that the chime communicatively couples the
doorbell to the remote computing device.” Petitioner contends Child teaches
this limitation in disclosing the control panel sending the image of the
person who presses the doorbell to a remote electronic device. Pet. 59–62
(citing Ex. 1007, Figs. 5, 7, ¶¶ 6, 9, 44, 97–99; Ex. 1003, 119–122). Child
discloses that the images “may also be displayed by the control panel” and
“may be sent to a remote computing device” such as a mobile phone, tablet
computing device, or an office computer. Ex. 1007 ¶ 99. We determine
Child’s disclosure of the control panel sending the image to a remote
computing device teaches “sending the visitor alert from the chime to the
remote computing device such that the chime communicatively couples the
doorbell to the remote computing device” as claimed.
Claim 31 recites “receiving, by the doorbell system, a do not disturb
setting that determines whether the chime refrains from emitting sound.”
Petitioner contends that this limitation is taught by the combination of Child
and Hershkovitz. Opp. 14–21.
Petitioner contends that Child teaches receiving, at a control panel, a
setting that determines the functionality of a component of the doorbell
system in disclosing a remote access module to enable the control panel to
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be accessed using remote devices, so that the user could remotely set types
of settings including communications and door cameras. Opp. 14–16 (citing
Ex. 1007, Figs. 3, 5, ¶¶ 36, 60, 67, 71, 75, 76, 92, 94, 114; Ex. 1034, 35–43).
Child discloses that “a remote access module . . . could . . . enable the
control panel 620 to be accessed using remote devices . . . . Thus, a user of a
remote device could potentially set or view communications, door
cameras . . . or other settings remotely . . . .” Ex. 1007 ¶ 92. We determine
Child’s disclosure of using a remote device to access the control panel in
order to remotely set various settings teaches receiving, by the doorbell
system, a setting that determines the functionality of the doorbell system.
Petitioner contends that Hershkovitz teaches that the setting is a do
not disturb setting that mutes a chime. Opp. 16–17 (citing Ex. 1030, 3:23–
27, 4:66–67, 5:50–58; Ex. 1034, 43–45). Hershkovitz discloses “in one
operation mode selected using the user programming interface 13, the
doorbell unit may be muted so as not to disturb the occupants.” Ex. 1030,
5:53–55. Hershkovitz discloses that the user programming interface 13 may
be a laptop computer. Id. at 3:25–27. Hershkovitz discloses that the
doorbell unit may be a chime. Id. at 4:66–67. We determine that
Hershkovitz’s disclosure of a laptop computer used to select an operation
mode that mutes a chime teaches “receiving, by the doorbell system, a do
not disturb setting that determines whether the chime refrains from emitting
sound” as claimed.
Petitioner contends that combining Child’s teaching of receiving, at a
control panel, a setting that determines the functionality of a component of
the doorbell system, with the do not disturb setting that mutes a chime as
taught by Hershkovitz, does no more than yield the predictable result of
allowing a user to silence the chime. Opp. 17–21. Dr. Madisetti testifies
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that a person of ordinary skill in the art would have incorporated the do not
disturb setting of Hershovitz in Child’s doorbell system to yield the known
and predictable benefits of preventing visitors from disturbing the occupant
when a young child is sleeping, or late at night, or for times when the
occupant wants peace and quiet. Ex. 1034 ¶¶ 26–27 (citing Ex. 1030, 5:50–
58; Ex. 1032, 4:36–38; Ex. 1033, 1:28–30; Ex. 1024, 1–3).
We rely on Dr. Madisetti’s testimony and supporting evidence in
determining that adding the known do not disturb setting taught by
Hershkovitz to the settings that can be remotely set as taught by Child does
no more than yield the predictable result of allowing a user of Child’s
doorbell system to set a do not disturb setting that determines whether the
chime refrains from emitting sound as taught by Hershkovitz, for the benefit
of preventing visitors from disturbing the occupant. Ex. 1034 ¶¶ 26–27
(citing Ex. 1030, 5:50–58; Ex. 1032, 4:36–38; Ex. 1033, 1:28–30; Ex. 1024,
3); KSR, 550 U.S. at 416 (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”).
Patent Owner contends that a person of ordinary skill in the art would
not have been motivated to combine Child and Hershkovitz because Child
and Hershkovitz are not analogous. Reply 13–15. According to Patent
Owner, the doorbell of Hershkovitz is fundamentally different than the
doorbell of Child. Id. at 14. Petitioner contends that the relevant inquiry is
not whether the references are analogous to each other, but whether the
references are analogous to the claimed invention. Sur-reply 4–6 (citing In
re Klein, 647 F.3d at 1348). Petitioner contends that the field of endeavor of
the ’987 patent is doorbell systems and methods. Opp. 5 (citing Ex. 1001,
3:3–6). Petitioner contends that both Child and Hershkovitz are in the same
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field of endeavor as the ’987 patent. Opp. 5–6 (citing Ex. 1007 ¶¶ 6, 7, Fig.
2; Ex. 1030, 2:61–64). We agree with Petitioner and determine that the field
of endeavor of the ’987 patent is doorbell systems and methods and that
Child and Hershkovitz are also in the field of endeavor of doorbell systems
and methods. See Ex. 1001, 3:3–6; Ex. 1007 ¶¶ 6, 7, Fig. 2; Ex. 1030, 2:61–
64.
Patent Owner contends that Hershkovitz does not teach using a remote
computing device for any of its standard functionality. Reply 14. Patent
Owner’s contention is inconsistent with Hershkovitz’s teaching of using
laptop 13 remote from chime 17 to mute the chime. Ex. 1030, 5:53–55,
3:25–27, 4:66–67, Fig. 1.
Patent Owner contends that “receiving, by the doorbell system, a do
not disturb setting that determines whether the chime refrains from emitting
sound” as claimed requires the do not disturb setting to be received by both
the doorbell and the chime, because the preamble recites the “doorbell
system comprising a doorbell and a chime.” Reply 15–17. Patent Owner
contends that Hershkovitz sends the do not disturb setting to the doorbell
unit, or “chime” as claimed, but not to the doorbell switch, or “doorbell” as
claimed. Id. (citing Ex. 1030, 5:50–61; Ex. 2005 ¶¶ 21–25).
Petitioner contends that Patent Owner’s narrow construction, that both
the doorbell and the chime must receive the do not disturb setting, is not
required by the language of the claim. Sur-reply 9. Petitioner also contends
that the specification of the ’987 patent describes doorbell system 200
receiving a communication when only one component of the doorbell
system receives such communication. Id. at 9–10 (citing Ex. 1001, 31:47–
59, 34:31–33, 32:10–10, 34:61–65, 35:56–61, 42:61–64).
We do not agree with Patent Owner’s narrow construction, but, even
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were we to accept Patent Owner’s narrow construction, we disagree with
Patent Owner’s contention that Hershkovitz alone does not teach both the
doorbell and the chime receiving the do not disturb setting, because this is
not the relevant inquiry. Each reference must be read, not in isolation, but
for what it fairly teaches in combination with the prior art as a whole. See In
re Merck & Co., Inc., 800 F.2d at 1097. The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. In re Keller,
642 F.2d at 425.
As discussed above, we determine Child teaches “coupling
communicatively the chime to a wireless network of the building, to the
doorbell, and to a remote computing device” as claimed. Child further
teaches sending a request to perform a function from the remote device to
the chime, then sending the request from the chime to the doorbell.
Ex. 1007 ¶ 92 (A remote access module “enable[s] the control panel to be
accessed using remote devices . . . [to] set or view . . . door cameras.”); see
id. ¶ 41 (A “camera may be . . . integrated with a . . . doorbell.”).
Hershkovitz teaches sending a request to perform a do not disturb function
from a remote device to a chime. Ex. 1030, 5:50–58, Fig. 1. Sending a
request to perform a function from a remote device to a chime, and from the
chime to a doorbell as taught by Child, where the request is a do not disturb
request as taught by Hershkovitz, teaches sending the do not disturb request
to both the chime and the doorbell even under Patent Owner’s narrower
construction.
We determine proposed substitute claim 31 would have been obvious
over the combination of Child and Hershkovitz. We deny Patent Owner’s
request to enter proposed substitute claim 31 because claim 31 is
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unpatentable under 35 U.S.C. § 103.
3. Analysis of Claim 32
Claim 32 recites a “doorbell system.” Petitioner contends Child
teaches this limitation in disclosing a building monitoring system that
includes a doorbell integrated with an image capture system. Pet. 72–73
(citing Ex. 1007, Figs. 3, 5, ¶¶ 6, 65, 75, 94; Ex. 1003, 150–154). Child
discloses that an image capture system may be positioned in a doorbell.
Ex. 1007 ¶ 94. We determine that Child’s disclosure of an image capture
system positioned in a doorbell teaches a “doorbell system” as claimed.
Claim 32 recites “a chime.” Petitioner contends Child teaches this
limitation in disclosing a control panel that plays a chime when a visitor
presses a doorbell. Pet. 74 (citing Ex. 1007, Fig. 5, ¶ 36; Ex. 1003, 154–
156). Child discloses a control panel that detects when a doorbell is pressed
and responds by playing a chime. Ex. 1007 ¶ 36. We determine that Child’s
disclosure of a control panel that plays a chime teaches “a chime” as
claimed.
Claim 32 recites “a remote computing device communicatively
coupled to the chime.” Petitioner contends Child teaches this limitation in
disclosing a control panel that communicates with remote devices. Pet. 75–
76 (citing Ex. 1007, Fig. 5, ¶¶ 76, 92; Ex. 1003, 156–157). Child discloses
“control panel 620 to be accessed using remote devices (e.g., devices 504,
506 of FIG. 5), and to potentially have communications relayed through the
control panel 620 either from or to the remote device.” Ex. 1007 ¶ 92. We
determine that Child’s disclosure of a control panel that communicates with
remote devices teaches “a remote computing device communicatively
coupled to the chime” as claimed.
Claim 32 recites “a doorbell communicatively coupled with the
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remote computing device via the chime.” Petitioner contends Child teaches
this limitation in disclosing sending images from an image capture system of
a doorbell to the control panel and then sending the images from the control
panel to a remote device. Pet. 76–78 (citing Ex. 1007, Figs. 3, 5, ¶¶ 41, 44,
54, 75; Ex. 1003, 157–163). Child discloses that a camera is integrated with
the doorbell. Ex. 1007 ¶ 41. Child discloses sending “the image data [(from
the camera)] . . . to the transmitter . . . . [T]he transmitter 326 may transmit
the image data to a control panel . . . . [T]he control panel may send the
image data to a remote source (e.g., a mobile device) . . . .” Id. ¶ 44. We
determine that Child’s disclosure of sending images from a camera
integrated with a doorbell to a control panel and then sending the images
from the control panel to a remote device teaches “a doorbell
communicatively coupled with the remote computing device via the chime”
as claimed.
Claim 32 recites “a first communication from the doorbell to the
chime, wherein the first communication comprises a visitor alert.”
Petitioner contends that Child teaches this limitation in disclosing sending
images of a person who presses a doorbell to a chime. Pet. 78–79 (citing
Pet. 57–59; Ex. 1003, 163–168). As discussed in our analysis of claim 31,
we determine Child’s disclosure of capturing and sending an image of a
person who presses a doorbell to the control panel teaches “sending a visitor
alert from the doorbell to the chime.” Thus, we determine that Child teaches
“a first communication from the doorbell to the chime, wherein the first
communication comprises a visitor alert” as recited in claim 32.
Claim 32 recites “a second communication from the chime to the
remote computing device, wherein the second communication comprises the
visitor alert.” Petitioner contends Child teaches this limitation in disclosing
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that the control panel sends the captured image to a remote computing
device. Pet. 79–80 (citing Ex. 1007, Fig. 7, ¶¶ 44, 99; Ex. 1003, 168–170).
Child discloses that “the captured image(s) may be sent to a remote
computing device.” Ex. 1007 ¶ 99. We determine that Child’s disclosure of
sending images from the control panel to the remote computing device
teaches “a second communication from the chime to the remote computing
device, wherein the second communication comprises the visitor alert” as
claimed.
Claim 32 recites “a third communication from the remote computing
device to at least one of the chime and doorbell, wherein the third
communication comprises a do not disturb setting which determines whether
the chime refrains from emitting sound.” Petitioner contends that this
limitation is taught by the combination of Child and Hershkovitz. Opp. 14–
21. As discussed above in our analysis of claim 31, we determine Child’s
disclosure of using a remote device to access the control panel in order to
remotely set various settings teaches receiving, by the doorbell system, a
setting that determines the functionality of the doorbell system and that
Hershkovitz’s disclosure of a laptop computer used to select an operation
mode that mutes a chime teaches receiving, by the doorbell system, a do not
disturb setting that determines whether the chime refrains from emitting
sound. We determine that adding the known do not disturb setting taught by
Hershkovitz to the settings that can be remotely set as taught by Child does
no more than yield the predictable result of allowing a user of Child’s
doorbell system to send a communication from the remote computing device
to the control panel in order to set a do not disturb setting that determines
whether the chime refrains from emitting sound as taught by Hershkovitz,
for the benefit of preventing visitors from disturbing the occupant. Ex. 1034
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¶¶ 26–27 (citing Ex. 1030, 5:50–58; Ex. 1032, 4:36–38; Ex. 1033, 1:28–30;
Ex. 1024, 3); KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
Patent Owner relies on the same arguments for the patentability of
claim 32 as those presented for claim 31, which we find unpersuasive as
discussed above in our analysis of claim 31. Reply 12–17. Patent Owner
further contends that Hershkovitz does not teach the use of a “remote
computing device” as recited in claim 32 to use the mute functionality.
Reply 17. According to Patent Owner, the only disclosure of using a laptop
in Hershkovitz is for initial security setup of specifying a floor plan and
placing detectors, not as a control device. Id. at 18–19 (citing Ex. 1030,
3:13–27; Ex. 2005 ¶¶ 45–49).
Hershkovitz discloses that, “[g]iven the limitations and comfort level
when using a small touch screen as a programming interface for specifying a
floor plan and placing the detectors therein, an external programming
interface 13, such as a laptop computer . . . may be used.” Ex. 1030, 3:23–
27. Hershkovitz further discloses that “in one operation mode selected using
the programming interface 13, the doorbell unit may be muted so as not to
disturb the occupants.” Id. at 5:53–55. Patent Owner’s contention that
Hershkovitz does not teach using a laptop to select the mute function is
inconsistent with Hershkovitz’s disclosure of using interface 13, such as a
laptop computer, to select an operation mode for muting the doorbell unit so
as not to disturb the occupants.
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We determine proposed substitute claim 32 would have been obvious
over the combination of Child and Hershkovitz. We deny Patent Owner’s
request to enter proposed substitute claim 32 because claim 32 is
unpatentable under 35 U.S.C. § 103.
D. Analysis of Proposed Substitute Claims 33–46 for Written Description
In the Motion to Amend, Patent Owner states that the

amendments affect[] only challenged independent Claims 1 and
19. No proposed amendments are made to any dependent claims.
It is intended that the antecedent claims referenced in the
dependent claims will reflect proper claim dependency if the
proposed substitute claims are entered (e.g., if proposed Claim
31 is entered, the dependent claims previously depending from
Claim 1 will then depend, instead, from Claim 31, and so forth).
Mot. 2. Petitioner contends that although
the Motion states that “[n]o proposed amendments are made to
any dependent claims,” this is not accurate. The very next
sentence states: “It is intended that the antecedent claims
referenced in the dependent claims will reflect proper claim
dependency if the proposed substitute claims are entered.”
Opp. 2 (quoting Mot. 2). Petitioner also contends that “the Motion is
required to set forth written description support for each substitute
dependent claim ‘even if the only amendment to a dependent claim is in the
identification of the claim from which it depends’” and that “[t]he Motion
does not provide any indication where support may be found for the
proposed substitute claims.” Id. at 3 (quoting Lectrosonics, Inc. v. Zaxcom,
Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential)).
Our Rules require that a motion to amend must “set forth: (1) The
support in the original disclosure of the patent for each claim that is added or
amended; and (2) The support in an earlier-filed disclosure for each claim
for which benefit of the filing date of the earlier filed disclosure is sought.”
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37 C.F.R. § 42.121(b). During the hearing, Patent Owner confirmed that the
Motion to Amend seeks to cancel challenged claims 1–4, 10–13, 19–25, and
28 and replace the challenged claims with substitute claims 31–46. See Tr.
14:20–16:3. Patent Owner also confirmed that the Motion to Amend did not
set forth written description support for the proposed substitute dependent
claims 33–46. Tr. 17:25–19:17. Because Patent Owner’s motion to amend
does not set forth written description support for proposed substitute
dependent claims as required by 37 C.F.R. § 42.121(b), we deny Patent
Owner’s request to enter proposed substitute claims 33–46. See
Lectrosonics, IPR2018-01129, Paper 15 at 8 (holding that compliance with
37 C.F.R. § 42.121(b) requires a motion to amend to “set forth written
description support for each proposed substitute claim as a whole, and not
just the features added by the amendment. This applies equally to
independent claims and dependent claims, even if the only amendment to a
dependent claim is in the identification of the claim from which it
depends.”).

III. CONCLUSION
We grant Patent Owner’s request to cancel claims 1–4, 10–13, 19–25,
and 28, and deny Patent Owner’s request to enter proposed substitute claims
31–46, as summarized in the following table:
Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment 1–4, 10–13, 19–25, 28
Substitute Claims Proposed in the Amendment 31–46
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 31–46
Substitute Claims: Not Reached

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IV. ORDER
Accordingly, it is
ORDERED that Patent Owner’s Motion to Amend is granted as to its
request to cancel claims 1–4, 10–13, 19–25, and 28;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied as to substitute claims 31–46.
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PETITIONER:
Scott T. Jarratt
Andrew S. Ehmke
HAYNES AND BOONE, LLP
scott.jarratt.ipr@haynesboone.com
andy.ehmke.ipr@haynesboone.com

PATENT OWNER:
Neil Rubin
Kent Shum
RUSS AUGUST & KABAT
nrubin@raklaw.com
kshum@raklaw.com