Paper No. 44
`Date: March 1, 2019
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Cases
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2016-00173 (Patent 6,535,123 B2)
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`ORDER
`Outlining Briefing Schedule Post-Remand
`37 C.F.R. § 42.5(a)
`
`
`
`
`

`

`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2016-00173 (Patent 6,535,123 B2)
`
`
`
`
`
`
`I. INTRODUCTION
`A conference call was held on February 27, 2019, between counsel for the
`respective parties and Judges Zecher, Arpin, and Boudreau. We initiated the
`conference call to discuss the procedure on remand following a decision by the
`U.S. Court of Appeals for the Federal Circuit in Vivint, Inc. v. Alarm.com Inc.,
`Nos. 2017-2218, 2017-2219, 2017-2220, 2017-2260, 2017-2261, 2017-2262,
`2018 WL 6720031 (Fed. Cir. Dec. 20, 2018) (non-precedential) (Paper 42).1 In
`particular, we discussed whether additional briefing and evidence was necessary to
`determine whether Petitioner, Alarm.com Inc. (“Alarm.com”), demonstrated that
`the asserted prior art teaches or suggests the claim term “communication device
`identification codes,” which is required by claims 26–28, 30, 31, 33–37, 40, and 41
`of U.S. Patent No. 6,147,601 (“the ’601 patent), and claims 3–5, 7–12, 14–16, and
`18–20 of U.S. Patent No. 6,535,123 B2 (“the ’123 patent”), in light of the Federal
`Circuit’s construction of that term.2
`
`
`1 Unless otherwise noted, we refer to the papers filed in Case IPR2016-00116. The
`same papers were filed in Cases IPR2016-00161 and IPR2016-00173.
`2 Although the Federal Circuit recognized that certain claims of U.S. Patent No.
`6,462,654 B1 (“the’654 patent) also require the “communication device
`identification codes” limitation, it indicated that the proper construction of this
`claim term in the ’654 patent was “not presented here.” Paper 42, 6 n.3. During
`the conference call, we explained to the parties that, because of this footnote, we
`did not view the ’654 patent as falling within the limited scope of this remand. The
`parties raised no objection and agreed that the ’654 patent would not be subject to
`this remand. Consequently, our discussion going forward is limited to the claims
`in the ’601 and ’123 patents that require the “communication device identification
`codes” limitation.
`
`2
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`

`

`
`
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`
`IPR2016-00173 (Patent 6,535,123 B2)
`II. PROCEDRUAL HISTORY
`On May 2, 2017, we issued the following: (1) a Final Written Decision for
`Case IPR2016-00116, in which we determined that Alarm.com demonstrated by a
`preponderance of the evidence that claims 1, 2, 4, 6, 7, 10–15, 17, 18, 22, 23, 25,
`29, and 38 of the ’601 patent are unpatentable under 35 U.S.C. § 103(a), but that
`Alarm.com had not demonstrated by a preponderance of the evidence that claims
`5, 8, 9, 19–21, 26–28, 30, 31, 33–37 and 39–41 of the ’601 patent were
`unpatentable (Case IPR2016-00116, Paper 39); and (2) a Final Written Decision
`for Case IPR2016-00173, in which we determined that Alarm.com demonstrated
`by a preponderance of evidence that claims 1, 2, 4–6, 10, 13, and 15–17 of the ’123
`patent are unpatentable under § 103(a), but that Alarm.com had not demonstrated
`by a preponderance of the evidence that claims 3, 7–9, 11, 12, 14, and 18–20 of the
`’123 patent are unpatentable under § 103(a) (Case IPR2016-00173, Paper 62).
`Patent Owner, Vivint, Inc. (“Vivint”), appealed our determinations that certain
`subsets of claims of the ’601 and ’123 patents are unpatentable, and Alarm.com
`cross-appealed our determinations upholding the patentability of certain subsets of
`claims of the ’601 and ’123 patents. Case IPR2016-00116, Papers 40, 41;
`Case IPR2016-00173, 41, 42.
`On December 20, 2018, the Federal Circuit affirmed our determinations that
`certain subsets of claims in the ’601 and ’123 patent are unpatentable. Paper 42, 2.
`The Federal Circuit, however, reversed our construction of the claim term
`“communication device identification codes,” vacated the related conclusions, and
`remanded for further proceedings consistent with its decision. Id. at 2, 15. The
`Federal Circuit affirmed our determinations upholding the patentability of certain
`subsets of claims in the ’601 and ’123 patent in all other respects. Id. The Federal
`Circuit’s mandate issued on January 29, 2019. Paper 43.
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`3
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`

`
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`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`
`IPR2016-00173 (Patent 6,535,123 B2)
`III. DISCUSSION
`During the conference call, we inquired as to whether additional briefing and
`evidence was necessary to determine whether Alarm.com demonstrated that the
`asserted prior art teaches or suggests the claim term “communication device
`identification codes,” as construed by the Federal Circuit. See Paper 42, 10
`(stating “the Board’s conclusion that a phone number and email address cannot
`uniquely identify a communication device defies the . . . teachings” of the ’601 and
`’123 patents). The parties represented that, prior to the conference call, they had
`met and conferred to discuss this particular issue. The parties proposed the
`following briefing schedule: (1) Alarm.com be permitted to file a ten page
`opening brief narrowly tailored to address whether the asserted prior art teaches or
`suggests the claim term “communication device identification codes,” as construed
`by the Federal Circuit, due no later than Thursday, March 28, 2019; (2) Vivint be
`permitted to file a ten page responsive brief due no later than Thursday, April 25,
`2019; and (3) Alarm.com be permitted to file a five page reply brief due no later
`than Thursday, May 9, 2019. The parties also proposed that no new evidence of
`any kind may be filed with the opening brief, responsive brief, or reply brief.
`In addition, Vivint requested a three page sur-reply brief due no later than
`Thursday, May 16, 2019. In support of its request, Vivint noted the Office Trial
`Practice Guide Update (Aug. 13, 2018),3 which now permits a patent owner to file
`a sur-reply as a matter of right. In response, Alarm.com opposed Vivint’s request
`for a sur-reply because Alarm.com bears the burden of persuasion and, therefore,
`should be entitled to the last word on this particular issue.
`
`
`3https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice
`_Guide.pdf
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`4
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`
`
`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`
`IPR2016-00173 (Patent 6,535,123 B2)
`After a brief deliberation, we accepted the parties’ proposed briefing
`schedule in Cases IPR2016-00116 and IPR2016-00173 because it was consistent
`with the guidance provided in the Federal Circuit’s remand decision. We also
`granted Vivint’s request for a three page sur-reply brief in Cases IPR2016-00116
`and IPR2016-00173 because we could discern no reason why the new provision in
`the Office Trial Practice Guide Update that permits a patent owner to file a sur-
`reply as a matter of right should not apply to proceedings on remand from the
`Federal Circuit. As with the other briefing, no new evidence of any kind may be
`filed with the sur-reply.
`
`
`IV. ORDER
`It consideration of the foregoing, it is
`ORDERED that, in Cases IPR2016-00116 and IPR2016-00173,
`(1) Alarm.com is authorized to file a ten page opening brief due no later than
`Thursday, March 28, 2019; (2) Vivint is authorized to file a ten page responsive
`brief due no later than Thursday, April 25, 2019; and (3) Alarm.com is authorized
`to file a five page reply brief due no later than Thursday, May 9, 2019;
`FURTHER ORDERED that, in Cases IPR2016-00116 and IPR2016-00173,
`we grant Vivint’s request to file a three page sur-reply brief due no later than
`Thursday, May 16, 2019;
`FURTHER ORDERED that all briefing must be narrowly tailored to address
`whether the asserted prior art teaches or suggests the claim term “communication
`device identification codes” of the ’601 and ’123 patents, as construed by the
`Federal Circuit; and
`FURTHER ORDERED that no new evidence of any kind may be filed with
`each opening brief, responsive brief, reply brief, and sur-reply brief.
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`IPR2016-00116 (Patent 6,147,601)
`IPR2016-00161 (Patent 6,462,654 B1)
`IPR2016-00173 (Patent 6,535,123 B2)
`For PETITIONER:
`William H. Mandir
`Brian K. Shelton
`Sughrue Mion PLLC
`wmandir@sughrue.com
`bshelton@sughrue.com
`
`Roger Brooks
`Teena-Ann V. Sankoorikal
`Marc J. Khadpe
`Richard J. Stark
`Cravath, Swaine & Moore LLP
`rgbrooks@cravath.com
`tsankoor@cravath.com
`mkhadpe@cravath.com
`rstark@cravath.com
`
`
`For PATENT OWNER:
`Robert Greene Sterne
`Jason D. Eisenberg
`Lauren C. Schleh
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`rsterne-PTAB@skgf.com
`jasone-PTAB@skgf.com
`lschleh-PTAB@skgf.com
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