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 IPR2016-00116
`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
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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 IPR2016-00116
`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
`
`
`
`Petitioner Alarm.com respectfully submits this reply to address: (1) whether
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`Vivint’s proposed change to the ’601 Patent is properly characterized as a
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`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 the Petition—
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`namely, whether the prior art in the Petition discloses the proposed change.
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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, Inc. (“Vivint”) seeks to change “which said normal status” to “which
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`a normal status” in claim 39 of the 6,147,601 (the “’601 Patent” or “Patent”).
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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.” Neither ground applies here.
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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 the preceding
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`language in claim 39, neither of the claims from which claim 39 depends (claims
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`1
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`22 and 38) refers to a normal status message; instead, each refers to an exception
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`message that is “indicative of 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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`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. Also, the
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`Patent expressly teaches that the preferred embodiment differentiates between a
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`status message and an exception message using the first digit of the multi-digit
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`code sent from a device to the message delivery system, further reinforcing the
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`mutually exclusive nature of the two conditions. See Ex. 1001 at 5:24-27. Vivint’s
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`proposed correction does not follow from or correspond to the Patent’s description
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`of the invention. Further, it results in claim 39 reciting the contradictory
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`conditions of an exception condition and a normal condition.
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`Petitioner prepared its Petition assuming a more probable correction that
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`would change “said normal status message” to “said exception condition,”
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`2
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`resolving the contradiction explained above. However, there are other possible
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`ways to correct claim 39, including, making it depend from claim 31, instead of
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`claim 38, since claim 31 requires that the server generate exception messages when
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`the server has not received a normal status message for a piece of remote
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`equipment “within a predetermined period of time.” Because there is no clearly
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`evident correction, Vivint’s proposed change is not allowable under § 255.
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`Second, Vivint’s proposed change is not of a “minor character” because it
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`would work a substantive change to the claim, as explained above, and require
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`Petitioner to alter the basis on which it seeks review for claim 39, as explained in
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`Part II, infra. See Superior Fireplace, 270 F.3d at 1375; MPEP § 1480.01 (9th Ed.
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`Rev. Nov. 2013) (mistake not “‘minor’ . . . 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 is only proper if
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`“correction 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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`3
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`(as discussed above), which were equally or more consistent with the other claims
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`and the Patent, including Petitioner’s proposed correction to “exception condition.”
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`Furthermore, the prosecution history is silent on the issue, and therefore there
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`would be no way for the public—including Petitioner—to know which possible
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`change reflects the intended scope of the Patent. See, e.g., Superior Fireplace, 270
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`F.3d at 1371 (rejecting corrections “public could not discern from the public file”).
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`II. Assessment of Effect of Proposed Correction on Petition
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`Petitioner believes Vivint’s proposed change cannot be viewed as a
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`correction, including because Petitioner assumed in its Petition a different
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`correction that is more consistent with the specification—specifically, changing
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`“normal status” to “exception.” However, if the Board disagrees, Petitioner
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`contends that the prior art it previously identified also discloses a “normal status
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`message.” As discussed in Ground 3 of the Petition (pp. 41-42), Britton recites a
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`“check-in message” that indicates that a particular piece of monitored equipment is
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`functioning normally. Ex. 1104 at 4:48-51, 7:54-56, 8:7-10, 11:17-21.
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`Petitioner included claim 39 in Ground 4. For the added “normal status”
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`limitation, Petitioner would cite Britton (e.g., Pet. pp. 41-42 (Ex. 1104 at 4:48-51)).
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`Since Britton is not in Ground 4, Petitioner would remove claim 39 from Ground 4
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`and include claim 39 in Ground 3 and in a new Ground 5. (See table below.)
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`Because it could not anticipate the correction Vivint proposes, Petitioner seeks this
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`4
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`modification on fairness grounds should the Board allow Vivint’s correction.
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`Regarding Ground 3, Claim 39’s requirement that the exception message
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`includes identification information is met by at least French’s “graphical report”
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`(Pet. p. 52) and the implicit need in Shetty to identify equipment to the user in the
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`notifications (id at 19). Regarding Ground 5, it would have been obvious to
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`combine Britton in the system of Shetty and French. The Petition explains (id. at
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`pp. 44-45) why it would have been obvious to incorporate the “check-in message”
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`handling of Britton with Shetty (Ex. 1107 at ¶¶ 120-21, 134-45), and why it would
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`have been obvious to combine Shetty with French since French discloses a fax
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`notification mechanism and Shetty discloses using fax notifications (id. at 53-54).
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`See also Ex. 1107 at ¶¶ 143-46. Further, Shetty, Britton and French used the same
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`overall system architecture (Pet. pp. 39, 53). Thus, it would have been obvious to
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`include the use of Britton’s check-in messages along with French’s fax report in
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`the fax transmissions sent by Shetty’s central computer (id. at 44-45, 53-54).
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`Claim 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 status
`message pertains.
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`Ground 3: Shetty, Levac & Britton
`See claim 38 & 17 charts, Gr. 1.
`See claim 5, 8 & 30 charts, Gr. 3. Ex. 1107 at ¶¶ 130-32.
`Ground 5: Shetty, Levac, Britton & French
`See claim 38 & 18 charts, Gr. 4.
`See claim 5, 8 & 30 charts, Gr. 3. Ex. 1107 at ¶¶ 130-32.
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`“A further page of the report, not illustrated in the
`drawings, can include a diagram of the mechanical
`room in which the failed supply fan is located, and
`highlight the exact location of the supply fan.” Ex.
`1106 at 10:47-11:12; see also id. at 11:64-12:28.
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`5
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`Dated: February 3, 2016
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`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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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`Respectfully submitted,
`
`William H. Mandir
`Registration No. 32,156
`/William H. Mandir/
`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
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`6
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the attached Petitioner's Reply Brief
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`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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`Dated: February 3, 2016
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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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