UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`——————
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`ALARM.COM INC.
`Petitioner
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`v.
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`VIVINT, INC.
`Patent Owner
`
`——————
`
`Case IPR2015-02004
`Patent 6,147,601
`
`——————
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`PETITIONER’S REPLY BRIEF CONCERNING PATENT OWNER’S
`REQUEST FOR CERTIFICATE OF CORRECTION
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`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`——————
`
`ALARM.COM INC.
`Petitioner
`
`v.
`
`VIVINT, INC.
`Patent Owner
`
`——————
`
`Case IPR2015-02004
`Patent 6,147,601
`
`——————
`
`PETITIONER’S REPLY BRIEF CONCERNING PATENT OWNER’S
`REQUEST FOR CERTIFICATE OF CORRECTION
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
`
`By written order of the Patent Trial and Appeal Board, entered on January
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`28, 2016, Petitioner Alarm.com Inc. (“Alarm.com”) hereby respectfully submits
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`this reply brief addressing the Request for Certificate of Correction filed by Patent
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`Owner Vivint, Inc. (“Vivint”) as to U.S. Patent No. 6,147,601 (the “’601 Patent” or
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`“Patent”), filed December 17, 2015, and attached to Vivint’s January 8, 2016
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`Preliminary Response to Alarm.com’s Petition for Inter Partes Review (“IPR”),
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`Paper 1, in Case IPR2015-02004 (“Petition”).
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`Petitioner Alarm.com respectfully submits this reply brief to address:
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`(1) whether Vivint’s proposed change to the ’601 Patent is properly characterized
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`as a correction under 35 U.S.C. § 255, (2) why Petitioner could not discern the
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`correction unassisted and (3) the impact of this proposed change on Alarm.com’s
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`Petition—namely, whether the prior art Alarm.com cited in its Petition discloses
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`the proposed changed claim limitation.
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`I.
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`Petitioner’s Views on Vivint’s Proposed Correction and Reasons
`Why Petitioner Could Not Discern the Correction Unassisted
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`Vivint proposes one change to claim 39 of the ’601 Patent, changing “which
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`said normal status” to “which a normal status.”
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`Claim
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`Vivint’s Proposed Corrected Claim Language
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`39 A system according to claim 38, wherein said outgoing
`exception message comprises exception information and
`identification information concerning said piece of remote
`equipment to which said normal status which a normal
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`Dependent
`Claims
`Affected
`none
`
`1
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`
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`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
`
`Claim
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`Vivint’s Proposed Corrected Claim Language
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`Dependent
`Claims
`Affected
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`status message pertains.
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`Petitioner does not agree that Vivint’s proposed change to claim 39
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`constitutes an allowable correction under 35 U.S.C. § 255. Under that statute,
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`corrections are permitted only for “a mistake of a clerical or typographical nature”
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`or “a mistake . . . of minor character.” The proposed change does not meet the
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`requirements for either of these two categories of corrections.
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`First, the change does not constitute a correction, because even assuming the
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`change is meant to correct a clerical or typographical error, it is not “clearly
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`evident from the specification, drawings, and prosecution history how the error
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`should appropriately be corrected.” Superior Fireplace Co. v. Majestic Prods. Co.,
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`270 F.3d 1358, 1373 (Fed. Cir. 2001).
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` One defect in claim 39 as issued is that it lacks an antecedent basis for the
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`element “to which said normal status message pertains.” Like claim 39, neither of
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`the claims from which claim 39 depends (claims 22 and 38) refers to a normal
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`status message; instead, each refers to an exception message that is “indicative of
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`the exception condition.”
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`A second difficulty with claim 39—both as issued and as revised by
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`Vivint—is that it supposes that the server could receive contradictory messages—
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`specifically, an “exception message” (claims 22 and 38 and the preceding language
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`2
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`
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`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
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`of claim 39) and a “normal status message” (dependent claim 39)—pertaining to
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`the same piece of remote equipment at the same time. An “exception condition,”
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`according to the Patent, exists “whenever a piece of equipment operates outside its
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`preferred parameters.” Ex. 1001 at 3:46-47. In other words, the equipment is not
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`operating normally. By contrast, the Patent describes the use of a status message
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`to indicate that a piece of equipment is “okay.” See Ex. 1001 at 4:60-63. In
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`addition, the Patent expressly teaches that the preferred embodiment differentiates
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`between a status message and an exception message using the first digit of the
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`multi-digit code sent from a device to the message delivery system, further
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`reinforcing the mutually exclusive nature of the two conditions. See Ex. 1001 at
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`5:24-27. Vivint’s proposed correction does not follow from or correspond to the
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`Patent’s description of the invention. Further, it does not resolve the defect in
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`claim 39, rendering it improbable.
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`A more probable correction to claim 39 would change “said normal status
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`message” to “said exception condition,” resolving the contradiction explained
`
`above. However, there are other possible ways to correct claim 39, including,
`
`making it depend from claim 31, instead of claim 38, since claim 31 requires that
`
`the server generate exception messages when the server has not received a normal
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`status message for a particular piece of remote equipment “within a predetermined
`
`period of time.” However, because nothing in the Patent or its prosecution history
`
`3
`
`
`
`indicates how the error should be corrected and because there is no clearly evident
`
`correction, Vivint’s proposed change cannot be an allowable correction under
`
`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
`
`Section 255.
`
`Second, Vivint’s proposed change is not of a “minor character” because it
`
`seeks to broaden an element from referring to a specific normal status message (if
`
`an antecedent could be found) to any normal status message, thereby substantively
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`altering the scope of the claim. See id. at 1375 (“A mistake that, if corrected,
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`would broaden the scope of a claim must thus be viewed as highly important and
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`thus cannot be a mistake of ‘minor character.’”); Manual of Patent Examining and
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`Procedure (MPEP) § 1480.01 (9th Ed. Rev. Nov. 2013) (“A mistake is not
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`considered to be of the ‘minor’ character . . . if the requested change would
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`materially affect the scope or meaning of the patent.”).
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`In addition, because Vivint’s proposed correction, as explained above, is
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`contradictory and because there are multiple ways to fix the defect in claim 39,
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`reexamination—rather than correction—would be required to determine the correct
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`change to claim 39, if any. See 35 U.S.C. § 255 (correction proper only if “[it]
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`does not involve such changes as would require . . . re-examination”).
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`Petitioner could not discern the proposed correction in advance because,
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`while it was apparent the claim contained a mistake—specifically, the lack of
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`antecedent basis—there are a number of ways the claim could have been corrected
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`4
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`
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`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
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`(as discussed above), which were equally or more consistent with the rest of the
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`claims and the Patent. Furthermore, the prosecution history is silent on the issue,
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`and therefore there would be no way for the public—including Petitioner—to
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`know which of these possible changes reflects the intended scope of the Patent. See
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`Superior Fireplace, 270 F.3d at 1371 (“It would be inconsistent with [Congress’s
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`objective] to interpret § 255 to allow a patentee to broaden a claim due to the
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`correction of a clerical or typographical mistake that the public could not discern
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`from the public file and for which the public therefore had no effective notice.”).
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`II. Assessment of Effect of Proposed Correction on Petition
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`
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`Petitioner’s Petition is not affected by the proposed correction.
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`Although Petitioner believes claim 39 to be of indefinite scope and that Vivint’s
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`proposed change does not constitute a correction, the Petition nonetheless
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`identified where in the cited prior art disclosed a normal status message pertaining
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`to remote equipment was disclosed. See claim chart for claim 39 at p. 36 (cross-
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`referencing claim chart for claim 5 at p. 26 (citing Ex. 1003.0110 (“The No Alarm
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`stage is the stage in which a status channel is in its normal or a value channel (or
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`any derivative channel types) is within its alarm limits (and the channel has been
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`reset since any previous alarm).”))).
`
`5
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`
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`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
`
`Respectfully submitted,
`
`/William H. Mandir/
`William H. Mandir
`Registration No. 32,156
`
`BACK-UP COUNSEL
`Roger G. Brooks
`(rgbrooks@cravath.com)
`Teena-Ann V. Sankoorikal
`(tsankoor@cravath.com)
`Cravath, Swaine & Moore LLP
`825 Eighth Avenue
`New York, NY 10019
`T: 212-474-1000; F: 212-474-3700
`Pro Hac Vice motions pending
`
`
`
`
`
`
`
`Dated: February 3, 2016
`
`
`
`
`
`
`
`
`
`LEAD COUNSEL
`William H. Mandir (Reg. No. 32,156)
`(wmandir@sughrue.com)
`BACK-UP COUNSEL
`Brian K. Shelton (Reg. No. 50,245)
`(bshelton@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, D.C. 20037
`T: 202-293-7060; F: 202-293-7068
`
`
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`6
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`
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`Case IPR2015-02004 of
`U.S. Patent No. 6,147,601
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the attached Petitioner's Reply Brief
`
`Concerning Patent Owner's Request for Certificate of Correction was sent via
`electronic mail on February 3, 2016 to the following:
`
`Robert G. Sterne (rsterne-PTAB@skgf.com)
`Jason D. Eisenberg (jasone-PTAB@skgf.com)
`PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`1100 New York Avenue, N.W.
`Washington, DC 20005
`Counsel of Record for the Patent Owner in this proceeding
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`Respectfully submitted,
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`By: /s/ Brian K. Shelton
`Brian K. Shelton
`Registration No. 50,245
`Backup Counsel for Petitioner
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`7
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`Dated: February 3, 2016
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