NOTE: This disposition is nonprecedential.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, 

, 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 home-
located 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.” 

ll. 6–10. The user controls
these devices from a terminal “such as a portable tele-
phone, a notebook PC, and PDA.” 

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 

ll. 10–33, col. 12 ll. 43–49, fig. 8.
    To remotely control and monitor multiple home-
located devices, prior art methods relied directly upon a
home server. See 

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 

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 

ll. 46–54. By
leveraging the management facility, the home server can
be a “simple server” where “large processing power” is not
required. See 

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 

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 

ll. 44–
65. Then, after the user completes the authentication
process, the network management server in the manage-
ment facility transmits the status information of the
home-located device to the user’s terminal, see 

l.
56–col. 17 l. 4, along with a menu of options for the user
to select a different status, see 

l. 47–col. 18 l. 36.
Once the user selects a status, the terminal sends a
“decision signal” to the home network management facili-
ty. 

ll. 61–65, fig. 11 item Sa17. Next, a “modi-
fied status information” corresponding to the decision
signal is added to the decision signal, resulting in a “con-
trol instruction,” which is ultimately transmitted to the
home server. See 

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 

0 ll. 6–13. This causes
the air conditioner to switch to the “ON” position. See 

0 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 termi-
    nal;
    identifying, in said managing facility a server,
    said server being identified by a server identi-
    fier that corresponds to said terminal identifi-
    er;
    obtaining, in said management facility, from
    said server via said network, status infor-
    mation and said server identifier, said status
    information indicative of the status of home-
    located electronic devices controlled by said
    server;
    generating display information for said termi-
    nal dependent upon the performance of said
    terminal, wherein said display information in-
    cludes the status of said home-located elec-
    tronic devices based on said status
    information and a prompt for input of a con-
    trol instruction for said home-located electron-
    ic devices, said terminal being identified by
    said terminal identifier, said terminal identi-
    fier corresponding to said server identifier;
    transmitting said display information from
    said management facility to said terminal;
    displaying, with said terminal, a screen show-
    ing the status of said home-located electronic
    devices and a screen to prompt for input of a
    control instruction of said home-located elec-
    tronic devices on the basis of the received dis-
    play information;
    transmitting, by said terminal, said terminal
    identifier and first control information;
    generating, by said management facility, sec-
    ond 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.

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 teach-
ings of Johnson and Moriya. Johnson teaches an internet-
based home communications system. See Johnson Ab-
stract. 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 

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 

ll. 51–67.
     In its final written decision, the Board concluded that
all challenged claims were unpatentable as obvious. See
Decision, 

, 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.” 

The chal-
lenged 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 “receiv-
ing, 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 com-
ported with its claim construction. See Decision, 

, 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 

also found that Moriya
taught the terminal identifier limitation because Moriya’s
model code was a terminal identifier. See 

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, 

, at *11–12.
    The Board also found that Johnson taught the “gener-
ating . . . second control information . . . on the basis of
said first control information” limitation recited in claims
1 and 16. 

According to the Board, the
command instruction disclosed in Johnson, which is
transmitted from the terminal to the data center, corre-
sponded 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.” 

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.” 

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 juris-
diction pursuant to 28 U.S.C. § 1295(a)(4)(A).
                           DISCUSSION
    We review the Board’s legal determinations de novo,
In re Elsner, 

, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 

,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 

, 229 (1938). We review the Board’s
claim constructions de novo “and its underlying factual
determinations involving extrinsic evidence for substan-
tial evidence.” Microsoft Corp. v. Proxyconn, Inc., 

, 1297 (Fed. Cir. 2015) (citing Teva Pharm.
USA, Inc. v. Sandoz, Inc., 

, 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, 

, 1362 (Fed. Cir. 2013) (citing
KSR Int’l Co. v. Teleflex Inc., 

, 406 (2007)).
Whether there are inherent teachings in a prior art
reference is a question of fact. See In re Napier, 

, 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 con-
strued “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 contra-
dicts the term’s plain meaning. Vivint also argues that
the terminal identifier should uniquely identify the ter-
minal, 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 con-
struction was reasonable. In an inter partes review,
claims are given their broadest reasonable interpretation.
See Cuozzo Speed Techs., LLC v. Lee, 

,
2142–46 (2016). The specification and the claims describe
the terminal identifier as being used to identify the ter-
minal as well as to enable communication with the termi-
nal. See ’727 patent col. 8 ll. 34–41. For example,
independent claim 1 recites “a terminal identifier that
identifies said terminal.” 

ll. 5–6. And inde-
pendent claim 16 recites “said terminal identifier to
determine at least one of a display capability or a com-
munication capability of said terminal.” 

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 com-
municate with the terminal. See Decision, 

, 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 

’s construction
simply encompasses both disclosed functions of the termi-
nal 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 neces-
sarily reach the management facility as required by the
claims, and thus does not meet the inherency require-
ment.
    Alarm.com responds that substantial evidence sup-
ported the Board’s finding that Johnson inherently teach-
es 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. Gene-
va Pharm., 

, 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 anticipat-
ing reference.” 

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 refer-
ence 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., 

, 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., 

, 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., 

, 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 ter-
minal IP address . . . comports with [its] construction of
‘terminal identifier.’” See Decision, 

, at
*10. However, inherency requires more than agreement;
inherency requires inevitability. See 

; see also Par 

. There-
fore, the Board’s evidence of merely “comport[ing]” with
its claim construction, see Decision, 

, at
*10, cannot constitute substantial evidence of the termi-
nal 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 

relying upon an Official Notice taken by the examiner
during prosecution that data packets sent over the inter-
net 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., 

, 1555 (Fed.
Cir. 1983) (“Inherency and obviousness are distinct con-
cepts.”) (citing In re Spormann, 

, 448 (CCPA
1966)). Even the Board acknowledged that the examin-
er’s Official Notice would have been permissible evidence
in an “obviousness evaluation.” See Decision, 

, 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 

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 sup-
ported 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 

8 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, 

, 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, 

, 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 

We
therefore conclude that the Board’s finding that Moriya
teaches the terminal identifier was supported by substan-
tial 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 interpreta-
tions. Therefore, as Vivint argues, the first control infor-
mation 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 infor-
mation be different from the content of the first control
information. Even if it did, Alarm.com argues that John-
son 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 infor-
mation” 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 

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 com-
mand instruction and before it retransmits the infor-
mation to the control unit. See 

(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 find-
ings 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