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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`——————
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`ALARM.COM INCORPORATED
`Petitioner
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`v.
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`VIVINT, INC.
`Patent Owner
`
`——————
`
`Case IPR2016-00116
`Patent 6,147,601
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`——————
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`PETITIONER’S OPENING BRIEF ON REMAND
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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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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`The Board’s Final Written Decision (“FWD”) found claims 26, 27, 28, 33,
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`34, 35 and 36 of U.S. Patent No. 6,147,601 (the “’601 Patent”) patentable solely on
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`the basis that (1) the broadest reasonable interpretation of “communication device
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`identification codes” (“CDICs”) excluded email addresses and telephone numbers,
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`and (2) based on that construction, prior art U.S. Patent No. 5,808,907 (“Shetty”)
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`did not disclose CDICs. On appeal, the Court of Appeals for the Federal Circuit
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`(“Federal Circuit”) expressly reversed the Board’s construction. There is no
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`dispute that Shetty discloses email addresses and telephone numbers. Patent
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`Owner Vivint, Inc. (“Vivint”) has raised no other basis to distinguish the
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`limitations of dependent claims 26, 27, 28, 33, 34, 35 and 36 over Shetty, and the
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`unpatentability of their parent claim 22 has been affirmed on appeal. Therefore
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`Petitioner Alarm.com Incorporated (“Alarm.com”) respectfully submits that the
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`Board should now find claims 26, 27, 28, 33, 34, 35 and 36 unpatentable.
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`I.
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`BACKGROUND
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`On October 30, 2015, Alarm.com filed a request for inter partes review
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`(“IPR”) of certain claims of the ’601 Patent. (Paper 1.) On May 4, 2016, the
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`Board instituted IPR of the ’601 Patent as to claims 1 and 22 and several claims
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`that depend, directly or indirectly, from those two independent claims. (Paper 14.)
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`On August 2, 2016, Vivint filed a Patent Owner Response. (Paper 20.) As to
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`claims 26, 27, 28, 33, 34, 35 and 36, the only argument Vivint made for
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`1
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`patentability, apart from its arguments for the patentability of their parent claim 22,
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`was that Shetty did not disclose CDICs. Response, 37-39. The Board held a
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`hearing in this IPR on January 31, 2017. (Paper 38.)
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`On May 2, 2017, the Board issued its FWD, finding many of the challenged
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`claims unpatentable. (Paper 39.) Notably, for purposes of this remand, the Board
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`determined that independent claim 22 was unpatentable because it would have
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`been obvious in view of Shetty, rejecting all of Vivint’s arguments for
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`patentability. FWD, 50.
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`However, the Board found claim 26 (which depends from claim 22) and
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`claims 27, 28, 33, 34, 35 and 36 (all of which depend from claim 26) patentable.
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`FWD, 70. The Board first construed the term CDIC in claim 26 as “referring to a
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`device ID or a serial number capable of uniquely identifying communication
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`devices” and rejected Alarm.com’s position that email addresses and telephone
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`numbers should also be included in the construction. Id. at 20. The Board then
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`applied its construction of CDIC to Shetty, reasoning that “Shetty’s telephone
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`numbers and email addresses are not consistent with this construction [of CDICs]
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`because they do not identify uniquely a specific device”. Id. at 52, 58, 62.
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`Both parties appealed aspects of the FWD to the Federal Circuit. (Papers 40,
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`41.) On December 20, 2018, the Federal Circuit issued an opinion (the “Opinion”)
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`affirming the FWD in all respects, except as to the claim term CDICs. (Paper 42.)
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`2
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`The Board’s conclusion that claim 22 is unpatentable in view of Shetty was upheld
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`on appeal and is not at issue on remand. With respect to the term CDIC in claim
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`26, the Federal Circuit held that “the Board’s conclusion that a phone number or
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`email address cannot uniquely identify a communication device defies the . . .
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`teachings” of the ’601 Patent. Op., 9. Accordingly, the Federal Circuit reversed
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`the Board’s construction of CDIC, vacated the related conclusions and remanded
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`for further consideration consistent with the Opinion. Id. at 15.
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`On February 27, 2019, the Board held a conference call with the parties
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`regarding the procedure on remand. On March 1, 2019, the Board issued an order
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`instructing, among other things, that “all briefing must be narrowly tailored to
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`address whether the asserted prior art teaches or suggests the claim term [CDIC] of
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`the ’601 . . . patent[ ], as construed by the Federal Circuit”. Order Outlining
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`Briefing Schedule Post-Remand, Paper 44 at 5.
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`II. ARGUMENT
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`This remand is directed to a single issue: “whether the asserted prior art
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`teaches or suggests the claim term [CDIC] of the ’601 . . . patent[ ], as construed
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`by the Federal Circuit”.
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`A. The Federal Circuit’s Interpretation of CDIC
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`In the FWD, the Board determined that the “the broadest reasonable
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`interpretation of the claim term [CDIC] includes either a device ID (e.g., a [mobile
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`3
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`identification number]) or a serial number of a device (e.g., an [electronic serial
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`number])”. FWD, 21. The Board also found that the specification and claims of
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`the ’601 Patent required the interpretation of CDIC to exclude email addresses and
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`telephone numbers. Id. at 20. On appeal, however, the Federal Circuit ruled that
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`the Board erred in excluding email addresses and telephone numbers from its
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`interpretation of CDIC. Op., 8-9. In particular, the Federal Circuit noted the ’601
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`Patent teaches that “a mobile identification number refers to a device in the same
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`way that a phone number refers to a cellular phone, i.e. a communication device”
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`(id. at 9, citing ’601 Patent, 6:61-65) and that “an email address is used to identify
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`a certain communication device” (id. at 9 n.4, citing ’601 Patent, 6:7-23).
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`In view of the Federal Circuit’s ruling, the broadest reasonable interpretation
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`of CDIC must include email addresses and telephone numbers. Alarm.com
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`therefore proposes that CDIC be construed as “an identifier (such as a device ID,
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`serial number, telephone number, or email address) capable of identifying a
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`communication device”.1
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`1 This construction of CDIC is identical to the construction to which Vivint and
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`Alarm.com have agreed in the related District Court litigation. See Joint Notice of
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`Stipulated Claim Construction Term, Vivint, Inc. v. Alarm.com Inc., No. 2:15-cv-
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`00392-CW (D. Utah), ECF No. 261 (Mar. 22, 2019).
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`4
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`B. Application to Shetty
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`Shetty teaches the CDIC term of the ’601 Patent, as construed by the Federal
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`Circuit, and therefore renders obvious claim 26 and claims 27, 28, 33, 34, 35 and
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`36 that depend (directly or indirectly) therefrom.
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`Claim 26, which depends from (unpatentable) claim 22, recites “a second
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`memory in which communication device identification codes of all of said user-
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`defined communication remote devices are stored”. The only open question on
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`remand is whether Shetty teaches CDICs. It does.
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`As the Board has recognized, Shetty teaches a “user profile database” that
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`contains profiles defining events about which a user is notified and how that user is
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`notified. FWD, 26; see Ex. 1103, 2:18-21 (“A user profile database 106 contains
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`information . . . including a user profile which defines which events will require
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`that the user be notified . . . .”), 2:42-45 (“The user profile defines the events which
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`trigger the notification and the method of notification.”); see also Petition, 15-16.
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`Shetty teaches modes of notifying users through a pager message, email message
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`or fax message: “Each profile may also trigger a different mode or modes of
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`communication (page, Email, fax).” Ex. 1103, 2:59-61. Shetty notes further that
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`“if the conditions of an alias for a particular user are met[,] then the user is
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`notified, as defined in the user profile. As stated above, the user may be notified
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`by either an electronic mail message and/or a pager message and/or facsimile.” Id.
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`5
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`at 3:16-20. As Alarm.com showed in the prior proceedings, Shetty’s notification
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`methods involve the use of stored email addresses and telephone numbers for
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`routing its messages. Reply, 20. Alarm.com’s expert testified to that fact. Ex.
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`1130 ¶ 163 (opining that “Shetty discloses storage of telephone numbers for
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`beepers, pagers, and telephones . . . .”); see also id. ¶¶ 143, 151, 157, 162, 164.
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`The Board recognized Shetty’s use of telephone numbers and email addresses for
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`notifications in the FWD. FWD, 52 (referring to “Shetty’s telephone numbers and
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`email addresses”).
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`Vivint has conceded that Shetty’s database stores email addresses and
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`telephone numbers for notifying users—in fact the entire premise of its
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`patentability argument for claim 26 was that Shetty stored only email addresses
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`and telephone numbers, and not device IDs or serial numbers. See, e.g., Response,
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`38 (“[T]he user profiles or aliases stored in Shetty’s user profile database . . . at
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`most identify addresses (e.g., for ‘an electronic mail message or report 114’) or
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`telephone numbers (e.g., for a ‘pager report’ or ‘facsimile report 112’) . . . .”
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`(quoting Institution Decision, Case No. IPR2016-00161, Paper 16 at 40-41)
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`(emphases added)). Moreover, Vivint’s own expert confirmed that Shetty stored
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`the phone numbers and email addresses used to send user notifications:
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`6
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`“Q Do you agree that the phone numbers and email
`addresses are actually stored in order for Shetty’s
`notification means to send out notifications?
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`A
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`I agree that those would have to be stored.”
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`Ex. 1118, 48:13-18.
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`Accordingly, there can be no dispute that Shetty teaches or suggests CDICs:
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`identifiers, including email addresses and telephone numbers, stored and used to
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`identify communication devices. This satisfies the CDIC limitation of claim 26
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`under the Federal Circuit’s Opinion. Vivint raised no other arguments about the
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`further limitations of claim 26 in its Patent Owner Response. Therefore, claim 26
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`is obvious in view of Shetty.
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`Claims 27, 28, 33, 34, 35 and 36, which depend (directly or indirectly) from
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`claim 26, should also be found unpatentable. Alarm.com previously demonstrated
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`that the further limitations of claims 27, 33, 34 and 35 would also have been
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`obvious in view of Shetty. Petition, 26-27. Alarm.com previously demonstrated
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`that claim 28 (depending from claim 27) would have been obvious in view of
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`Shetty and U.S. Patent No. 6,034,970 (“Levac”). Petition, 30-33, 38. Alarm.com
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`also demonstrated that claim 36, which depends from claim 26, would have been
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`obvious in view of Shetty, Levac and U.S. Patent No. 5,061,916 (“French”).
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`Petition, 51-55.
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`Vivint raised no arguments in this proceeding as to patentability based on
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`7
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`the further limitations of claims 27, 28, 33, 34, 35 or 36. Accordingly, any
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`arguments other than as to the CDIC limitation were waived. Vivint has no basis
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`to argue for the patentability of these claims now.
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`C. Clarification of Other Affected Claims
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`Alarm.com also seeks a clarification of the Board’s determinations with
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`regard to claims 30, 31, 37, 40 and 41 (“normal status message claims” or “NSM
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`claims”), which depend, directly or indirectly, from claim 26. The Board found the
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`NSM claims to be patentable on two bases: (1) the Board’s conclusion that
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`Shetty’s email addresses and telephone numbers were not CDICs, and (2) the
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`Board’s findings relating to the “normal status message” limitation in claim 30.
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`FWD, 68-69. As the former ground is no longer a basis for patentability,
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`Alarm.com respectfully requests that the Board’s decision after remand state that
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`its finding of patentability regarding the NSM claims is based solely on its
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`conclusions regarding the “normal status message” limitation recited in claim 30.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`find claim 26 to be unpatentable, as well as claims 27, 28, 33, 34, 35 and 36 that
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`depend therefrom.
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`8
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`Dated: March 28, 2019
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`LEAD COUNSEL
`William H. Mandir (Reg. No. 32,156)
`(wmandir@sughrue.com)
`BACK-UP COUNSEL
`David P. Emery (Reg. No. 55,154)
`(demery@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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`Respectfully submitted,
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`/s/ William H. Mandir
`William H. Mandir
`Registration No. 32,156
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`BACK-UP COUNSEL
`Richard J. Stark (Reg. No. 73,709)
`(rstark@cravath.com)
`Marc J. Khadpe
`(mkhadpe@cravath.com)
`Cravath, Swaine & Moore LLP
`825 Eighth Avenue
`New York, NY 10019
`T: 212-474-1000; F: 212-474-3700
`
`Teena-Ann V. Sankoorikal
`(tsankoorikal@levinelee.com)
`Levine Lee LLP
`650 Fifth Avenue
`New York, NY 10019
`T: 212-223-4400; F: 212-223-4425
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`9
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`CERTIFICATE OF SERVICE
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`The undersigned certifies that a copy of the foregoing document was sent via
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`email on March 28, 2019 to the following:
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`Robert G. Sterne (rsterne-PTAB@skgf.com)
`Jason D. Eisenberg (jasone-PTAB@skgf.com)
`STERNE, KESSLER, GOLDSTEIN & FOX
`1100 New York Avenue, N.W.
`Washington, DC 20005
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`Counsel of Record for the Patent Owner Vivint Inc.
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`Dated: March 28, 2019
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`Respectfully submitted,
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`/s/ William H. Mandir
`William H. Mandir
`Registration No. 32,156
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`10
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