Paper 33
`Trials@uspto.gov
`571-272-7822
`
`Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`
`
`Case IPR2016-00116 (Patent 6,147,601)
`Case IPR2016-00161 (Patent 6,462,654 B1)
` Case IPR2016-00173 (Patent 6,535,123 B2)1
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Argument
`35 U.S.C. 316(a)(10) and 37 C.F.R. § 42.70(a)
`
`1 This Order addresses an issue that is identical in all three cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`
`
`Case IPR2016-00116 (Patent 6,147,601)
`Case IPR2016-00161 (Patent 6,462,654 B1)
` Case IPR2016-00173 (Patent 6,535,123 B2)1
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Argument
`35 U.S.C. 316(a)(10) and 37 C.F.R. § 42.70(a)
`
`1 This Order addresses an issue that is identical in all three cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2015-01977 (Patent 6,535,123 B2)
`
`
`
`
`
`
`On May 4, 2016, we instituted an inter partes review as to claims 1, 2, 4–15,
`17–23, 25–31, and 33–41 of U.S. Patent No. 6,147,601. Case IPR2016-00116,
`Paper 14. On May 12, 2016, we instituted an inter partes review as to claims 9,
`10, 14, 17, 18, 22, and 25–28 of U.S. Patent No. 6,462,654 B1. Case IPR2016-
`00161, Paper 16. On May 10, 2016, we instituted an inter partes review as to
`claims 1–20 of U.S. Patent No. 6,535,123 B2. Case IPR2016-00173, Paper 14.
`We issued a Scheduling Order in each proceeding that included a January 31, 2017
`oral argument date, if requested by the parties. Case IPR2016-00116, Paper 15, 6;
`Case IPR2016-00161, Paper 17, 6; Case IPR2016-00173, Paper 15, 6. On
`December 20, 2016, Petitioner, Alarm.com Incorporated, and Patent Owner,
`Vivint, Inc., both requested oral argument for these proceedings pursuant to
`37 C.F.R. § 42.70(a). Case IPR2016-00116, Papers 30, 31; Case IPR2016-00161,
`Papers 34, 35; Case IPR2016-00173, Papers 31, 32. The parties’ requests are
`granted-in-part.
`Alarm.com requests a total of ninety minutes to address the issues in these
`three cases in a single, combined argument, or alternatively, sixty minutes to
`address the issues in Case IPR2016-00161, forty-five minutes to address the issues
`in Case IPR2016-00161, and fifty minutes to address the issues in Case IPR2016-
`00173, if the cases are presented separately. Case IPR2016-00116, Paper 31, 2;
`Case IPR2016-00161, Paper 35, 2; Case IPR2016-00173, Paper 32, 2. Vivint
`likewise requests a combined hearing and requests ninety minutes per side for the
`oral argument. Case IPR2016-00116, Paper 30, 1; Case IPR2016-00161, Paper 34,
`1; Case IPR2016-00173, Paper 31, 1. We have reviewed the issues that the parties
`intend to address for each proceeding, and agree with the parties that a single,
`combined hearing for all three cases is warranted in view of the very substantial
`
`
`
`2
`
`
`
`
`
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2015-01977 (Patent 6,535,123 B2)
`
`
`overlap in the issues presented. Nonetheless, also mindful of the overlap in the
`issues presented between the cases, we determine that two hours of oral argument
`time, in total, should be more than sufficient. Accordingly, each party will have
`one hour of total time to present its combined arguments with respect to all
`three proceedings.
`Alarm.com bears the ultimate burden of proof that the challenged claims are
`unpatentable based on the grounds of unpatentability (“grounds”) instituted in
`these proceedings. 35 U.S.C. § 316(e). Alarm.com, therefore, will proceed first to
`present its case as to the challenged claims and the grounds instituted. Alarm.com
`may reserve rebuttal time. Thereafter, Vivint will respond to Alarm.com’s case.
`Alarm.com then will make use of its rebuttal time to respond to Vivint’s case.
`The hearing will commence at 1:00 PM Eastern Standard Time on
`
`Tuesday, January 31, 2017, and it will be open to the public for in-person
`attendance on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia.2 In-person attendance will be accommodated on a first-
`come first-serve basis. We will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no
`later than seven business days before the hearing date. They shall be filed with the
`Board no later than the time of the hearing. Demonstrative exhibits are not
`evidence, but merely a visual aid at the hearing. Demonstrative exhibits shall not
`introduce new arguments or evidence. The parties must initiate a conference call
`
`
`2 We acknowledge that the parties have requested that the hearing be conducted in
`Hearing Room A. Unfortunately, at this time, we cannot confirm that Hearing
`Room A will be available for this hearing.
`3
`
`
`
`
`
`
`
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2015-01977 (Patent 6,535,123 B2)
`
`
`with us at least two business days prior to the hearing date to resolve any dispute
`over the propriety of either party’s demonstrative exhibits. For further guidance on
`what constitutes an appropriate demonstrative exhibit, the parties are directed to
`CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033
`(PTAB Oct. 23, 2013) (Paper 118).
`We expect lead counsel for each party to be present at the hearing; however,
`any backup counsel may make the actual presentation, in whole or in part. See
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14, 2012).
`If lead counsel for either party is unable to attend the hearing, the parties shall
`request a joint telephone conference call no later than two business days prior to
`the hearing date to discuss the matter.
`We take this opportunity to remind the parties that each presenter must
`identify clearly and specifically each demonstrative exhibit, e.g., by slide or screen
`number, referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that two members of the panel
`will be attending the hearing electronically from remote locations. If the parties
`have questions as to whether demonstrative exhibits would be sufficiently visible
`and available to each of the Administrative Patent Judges presiding over the
`hearing, the parties are invited to contact the Board at 571-272-9797.
`Requests for audio-visual equipment are to be made at least five business
`days in advance of the hearing date. Such requests must be sent to
`Trials@uspto.gov. If the requests are not received timely, equipment may not be
`available on the day of the hearing.
`
`
`
`4
`
`
`
`
`
`
`
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2015-01977 (Patent 6,535,123 B2)
`
`For PETITIONER:
`William H. Mandir
`Brian K. Shelton
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`bshelton@sughrue.com
`
`Roger G. Brooks
`Teena-Ann V. Sankoorikal
`Marc J. Khadpe
`CRAVATH, SWAINE & MOORE LLP
`rgbrooks@cravath.com
`tsankoor@cravath.com
`mkhadpe@cravath.com
`
`
`For PATENT OWNER:
`
`Robert Greene Sterne
`Jason D. Eisenberg
`Lauren C. Schleh
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne@skgf.com
`jasone-PTAB@skgf.com
`lschleh-PTAB@skgf.com
`
`
`
`
`
`
`5
`
`
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