`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Clark S. Cheney
`Chief Administrative Law Judge
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`
`
`
`Investigation No. 337-TA-1277
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`
`
`In the Matter of:
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`CERTAIN SMART THERMOSTATS, LOAD
`CONTROL SWITCHES, AND
`COMPONENTS THEREOF
`
`
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`RESPONDENTS’ OPPOSITION TO CAUSAM ENTERPRISES, INC.’S
`MOTION TO STRIKE PORTIONS OF RESPONDENTS’ REPLY BRIEF
`[MOT. NO. 1277-050]
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`Causam’s contingent motion is founded on a false equivalence between (1) Respondents’
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`citation in their Post-Hearing Reply Brief to a PTAB Institution Decision1 to support a legal
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`proposition, and (2) Causam’s reference in its Post-Hearing Rebuttal brief to statements
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`allegedly made by ecobee in an IPR petition to support a factual proposition. According to
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`Causam, there is equivalence because both sides are referencing “events that occurred after the
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`hearing in this Investigation” and, therefore, both of the references “[s]hould be [s]tricken for the
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`[s]ame [r]eason.” Contingent Motion at 2. But the citations are not equivalent; there is a critical
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`distinction. Respondents appropriately cite the PTAB Institution Decision as persuasive
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`authority to support the legal concept that prior art can serve to invalidate a patent under 35
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`U.S.C. § 103 even if the art was considered by the examiner during prosecution. Causam, on the
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`other hand, cites statements allegedly made by a party (ecobee) as evidence that supposedly
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`tends to prove that Causam owns the asserted patents.
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`1 “PTAB Institution Decision” refers to the PTAB’s Decision Granting Institution of Inter Partes Review, IPR2022-
`00404, Paper No. 10 (PTAB July 22, 2022), attached as Exhibit A to Respondents’ Post-Hearing Reply Brief.
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`There is no legitimate basis to strike Respondents’ citation to the PTAB’s recent
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`Institution Decision. Nothing in the law or the Ground Rules prevents Respondents from doing
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`so, and tellingly, Causam cites no legal authority to support its argument. Causam’s Contingent
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`Motion should be denied.
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`I. Causam Ignores the Distinction Between “Authority” and “Evidence”
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`Causam’s Motion is based on an incorrect depiction of the difference between “authority”
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`and “evidence.” Causam does not argue that Respondents are precluded from citing post-
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`Hearing authority, nor is there any rule or principle that prevents Respondents from doing so.
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`Causam instead mischaracterizes Respondents as citing the PTAB Institution Decision as
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`“evidence” (Contingent Motion at 3) and then argues that if its own citation to outside-the-record
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`evidence is stricken then Respondents’ reference to the PTAB Institution Decision must also be
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`stricken.
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`Authority is “[a] source, such as a statute, case, or treatise, cited in support of a legal
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`argument.” AUTHORITY, Black’s Law Dictionary (11th ed. 2019); see also id. (“A legal
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`writing taken as definitive or decisive; esp., a judicial or administrative decision cited as a
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`precedent … The term includes not only the decisions of tribunals but also statutes, ordinances,
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`and administrative rulings.”). Specifically, as applicable here, “persuasive authority” is
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`“authority that carries some weight but is not binding on a court, often from a court in a different
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`jurisdiction.” Id. The PTAB Institution Decision is precisely that—a non-binding decision of a
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`tribunal, cited in support of Respondents’ legal argument.
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`Evidence, in contrast, is “[s]omething (including testimony, documents, and tangible
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`objects) that tends to prove or disprove the existence of an alleged fact.” EVIDENCE, Black’s
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`Law Dictionary (11th ed. 2019); see also id. (documentary evidence is “[e]vidence supplied by a
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`2
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`writing or other document, which must be authenticated before the evidence is admissible”).
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`Causam’s citation to statements allegedly made by ecobee in its IPR petition falls within this
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`definition for purposes of this analysis. Under Causam’s theory, ecobee’s IPR petition is a
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`document containing statements by ecobee that allegedly concede that Causam owns the ’268
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`Patent. Causam seeks to use that document to resolve a disputed issue of fact, namely, whether
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`Causam owns the ’268 Patent.
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`II.
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`Respondents Appropriately Cited the PTAB Institution Decision as Authority
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`Respondents cited the PTAB Institution Decision as persuasive legal authority—i.e., a
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`decision that carries some weight but is not binding on the ALJ, cited in support of Respondents’
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`legal argument that prior art can be invalidating even if the art was previously considered by an
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`examiner. As Respondents explained in their Post-Hearing Reply Brief, the “Ehlers” reference
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`was considered during prosecution but can still serve as invalidating prior art:
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`Ehlers. Causam fails to properly develop any other arguments with respect to the
`obviousness combinations presented by Respondents. For example, Causam
`argues that Ehlers was considered by the PTO (along with hundreds of other
`cited references) in prosecution of the ’268 and ’592 Patents. However, that
`does not mean that Ehlers cannot render the patents obvious, as the PTO
`confirmed by recently instituting an Inter Partes Review of the ’592 Patent
`based on an Ehlers ground (as well as a ground involving Chen). (See
`Attachment A (Decision Granting Institution of Inter Partes Review,
`IPR2022-00404, Paper No. 10 (PTAB July 22, 2022)).) In instituting review, the
`PTAB specifically relied on paragraphs 16 and 79 of Ehlers as disclosing “actual
`value of power reduction[] is confirmed by measurement and verification” and
`paragraphs 79, 97, 175, and 178 of Ehlers as disclosing “the actual value of power
`to be reduced is a power supply value (PSV); wherein the PSV is generated at a
`control center, a meter, a submeter, a building control system, or any device or
`controller that measures power within the standard as supplied by regulatory
`bodies that govern regulation of the electric power grid.” Id. at 16–18, 23.
`Causam then ignores all of the relevant teachings of Ehlers—detailed in
`Respondents’ Post-Hearing Brief (at pp. 190–210)—when arguing that neither
`Ehlers nor its secondary references disclose generating M&V data. In truth, as
`noted above, both Ehlers and Framework describe generating M&V data in detail.
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`Respondents’ Post-Hearing Reply Brief at 85 (emphasis added).
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`3
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`Causam asserts that “decisions from the PTAB to institute an IPR are not ‘legal
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`authority’” (Contingent Motion at 4)—but cites nothing to support its assertion. While the
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`PTAB Institution Decision is not binding on the ALJ, there is no support for Causam’s argument
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`that the decision does not qualify as persuasive legal authority.
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`Finally, Causam argues (Contingent Motion at 3) that Respondents improperly included
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`the PTAB Institution Decision as Attachment A to their Post-Hearing Reply Brief. But
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`Respondents were simply complying with Ground Rule 5(n), which requires parties to append to
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`their briefs any cited unpublished decisions. There is no support for Causam’s argument that
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`appended legal authority counts toward a party’s page limit.
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`III. Causam’s Attempt to Draw an Equivalency to Its Own Citation of Outside-
`the-Record Evidence Is Meritless
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`Causam also argues that if it is prevented from citing statements in ecobee’s IPR petition
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`then Respondents must be prevented from citing the PTAB Institution Decision. But, as
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`explained above, Causam is citing ecobee’s alleged statements as evidence. Those statements
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`are not legal authority. As explained in ecobee’s pending motion to strike, this distinction is
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`notable because the evidentiary record in this case closed on July 1, 2022, and the alleged
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`statements by ecobee are not in the record.2 Causam did not seek (and the Contingent Motion
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`does not seek) leave to supplement the evidentiary record to include ecobee’s IPR petition.
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`2 Notably, in its opposition to ecobee’s motion to strike (at 2), Causam argues that it is permitted
`to introduce the alleged statements from ecobee’s IPR petition because the Ground Rules do not
`limit a party from addressing in its reply brief contentions that could not have been raised in the
`pre-hearing brief. This is a strawman argument that misses the point. Causam’s Post-Hearing
`Rebuttal Brief does not contain a new contention that it owns the ’268 patent. The problem is
`that it cites new evidence (i.e., ecobee’s alleged statements in the IPR petition) that allegedly
`supports that existing contention. Nothing in the Ground Rules permits a party to cite in a post-
`hearing brief new evidence that is not in the record.
`4
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`Rather, Causam simply tried to inject the new alleged evidence into its Post-Hearing Rebuttal
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`Brief without leave to do so.
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`There was a robust and complete evidentiary record developed during discovery and
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`presented at the Hearing, and the record establishes that Causam does not own all rights in any of
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`the asserted patents. Unable to make a convincing ownership argument based on the evidentiary
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`record, Causam argued in its Post-Hearing Rebuttal Brief that it must own the ’268 patent
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`because ecobee recently served Causam with an IPR petition for the patent and in doing so
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`allegedly “admitted” ownership. That Causam is closing its case by trying to inject this type of
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`“evidence” confirms what the evidentiary record establishes: Causam does not own the ’268
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`patent.
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`
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`Respondents respectfully request that the Chief ALJ deny Causam’s Contingent Motion
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`in its entirety.
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`September 1, 2022
`
`/s/ Kirk T. Bradley
`M. Scott Stevens
`ALSTON & BIRD LLP
`950 F Street NW
`Washington, DC 20004
`Telephone: (202) 239-3025
`Facsimile: (202) 654-4825
`
`Kirk T. Bradley
`Christopher TL Douglas
`Lauren N. Griffin
`Matthew M. Turk
`ALSTON & BIRD LLP
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 282804000
`Telephone: (704) 444-1030
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`Bradley W. Micsky
`Dennis C. Bremer
`CARLSON CASPERS VANDENBURGH
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`& LINDQUIST, PA
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9666
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`Counsel for Itron, Inc.
`
`/s/ M. Scott Stevens
`M. Scott Stevens
`ALSTON & BIRD LLP
`950 F Street NW
`Washington, DC 20004
`Telephone: (202) 239-3025
`Facsimile: (202) 654-4825
`
`S. Benjamin Pleune
`Christopher TL Douglas
`Lauren N. Griffin
`Matthew M. Turk
`ALSTON & BIRD LLP
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 282804000
`Telephone: (704) 444-1030
`
`Bradley W. Micsky
`Dennis C. Bremer
`CARLSON CASPERS VANDENBURGH
`& LINDQUIST, PA
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9666
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`Counsel for Ademco Inc. and Resideo Smart
`Homes Technology (Tianjin)
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`/s/ Megan S. Woodworth
`Megan S. Woodworth
`Elizabeth M. Manno
`Leslie A. Lee
`Venable LLP
`600 Massachusetts Ave, N.W.
`Washington, DC 20001
`Telephone: (202) 344-4507
`Facsimile: (202) 344-8300
`Email: ecobee1277@venable.com
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`Timothy J. Carroll
`Steven M. Lubezny
`Catherine N. Taylor
`Venable LLP
`227 W Monroe St, Suite 3950
`Chicago, IL 60606
`Telephone: (312) 820-3400
`Facsimile: (312) 820-3401
`Email: ecobee1277@venable.com
`
`Manny J. Caixeiro
`Venable LLP
`2049 Century Park East, Suite 2300
`Los Angeles, CA 90067
`Telephone: (310) 229-9900
`Facsimile: (310) 229-9901
`Email: ecobee1258@venable.com
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`Counsel for Respondent ecobee, Inc.
`
`/s/ Daniel Smith
`Deanna Tanner Okun
`Daniel Smith
`AMS Trade, LLP
`1133 Connecticut Avenue, NW
`Washington, DC 20036
`Telephone: (202) 467-6300
`Facsimile: (202) 466-2006
`Email: ALARM-002@adduci.com
`
`Keith R. Hummel
`Sharonmoyee Goswami
`CRAVATH, SWAINE & MOORE LLP
`825 Eighth Avenue
`New York, NY 10019
`Phone: (212) 474-1000
`Facsimile: (212) 474-3700
`Email: service-csm-alarm-
`1277@cravath.com
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`Counsel for Respondents Alarm.com
`Holdings, Inc., Alarm.com Incorporated and
`EnergyHub, Inc.
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`CERTIFICATE OF SERVICE
`
` Via Hand Delivery
` Via First Class Mail
` Via Electronic Filing
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` Via Hand Delivery
` Via First Class Mail
` Via Electronic Mail
`
`
`I hereby certify that a copy of the foregoing document was served on the following parties in the
`manner indicated below, this 1st day of September, 2022:
`
`
`The Honorable Lisa Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, D.C. 20436
`
`The Honorable David P. Shaw
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, SW, Room 317
`Washington, D.C. 20436
`Pyong.Yoon@usitc.gov
`Shaw337@usitc.gov
`
`Jeffrey M. Telep
`KING AND SPALDING LLP
`1700 Pennsylvania Avenue N.W.
`Washington, DC 20006
`Causam_ITC_1277@kslaw.com
`
`Counsel for Complainant Causam Enterprises, Inc.
`
` Via Hand Delivery
` Via First Class Mail
` Via Electronic Mail
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`8
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` Via Hand Delivery
` Via First Class Mail
` Via Electronic Mail
`
`
` Via Hand Delivery
` Via First Class Mail
` Via Electronic Mail
`
`
`M. Scott Stevens
`ALSTON &BIRD LLP
`The Atlantic Building
`950 F Street NW
`Washington, DC 20004
`ResideoITC@Alston.com
`ItronITC@Alston.com
`
`Counsel for Respondent Resideo Technologies Inc.
`and Resideo Smart Homes Technology (Tianjin)
`and Itron, Inc. and Itron Distributed Energy
`Management, Inc.
`
`Bradley W. Micsky
`Dennis C. Bremer
`CARLSON CASPERS VANDENBURGH &
`LINDQUIST, PA
`Capella Tower, Suite 4200
`225 South Sixth Street
`Minneapolis, MN 55402
`bmicsky@carlsoncaspers.com
`
`Counsel for Respondent Resideo Technologies Inc.
`and Resideo Smart Homes Technology (Tianjin)
`Deanna Tanner Okun
`ADDUCI,MASTRIANI &SCHAUMBERG LLP
`1133 Connecticut Ave NW
`Washington, DC 20036
`Alarm-002@adduci.com
`
`Keith R. Hummel
`CRAVATH, SWAINE &MOORE LLP
`825 8th Avenue
`New York, NY 10019
`csm-alarm-1277@cravath.com
`
`
`Counsel for Respondents Alarm.com Holdings, Inc.,
`Alarm.com Inc., and EnergyHub, Inc.
`
`
`/s/ Philippe Richards
` Philippe Richards - Paralegal
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`9
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