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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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`ALARM.COM INC.,
`Petitioner
`v.
`
`VIVINT, INC.
`Patent Owner
`
`____________
`
`Case IPR2016-00116
`Patent 6,147,601
`___________________
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S OPENING
`BRIEF ON REMAND
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2016-00116
`U.S. Patent No. 6,147,601
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION ............................................................................................. 1
`II. STATEMENT OF FACTS ................................................................................ 2
`III.
`ARGUMENT ................................................................................................. 5
`A. Shetty does not disclose email addresses or phone numbers, and even if
`argued they are inherent, Shetty does not disclose they are configured in its user
`profile database. ..................................................................................................... 5
`B. The Board should refuse Alarm.com’s invitation to make an advisory
`opinion on claims not at issue in this remand. ..................................................... 10
`IV.
`CONCLUSION ............................................................................................ 10
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`I.
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`INTRODUCTION
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`U.S. Patent No. 6,147,601
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`Alarm.com’s Remand Brief (Paper 47) mischaracterizes the issue on remand
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`by only focusing on what a “communication device identification code” (“CDIC”)
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`might be while ignoring other required claim terms. Also, the only question the
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`Board must answer on remand1 is whether the Petition met the threshold burden of
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`proving by a preponderance of the evidence that the evidence the Petition points to
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`in Shetty teaches all the required features of claim 26 and its dependent claims 27-
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`28 and 33-362, given the Federal Circuit’s claim interpretation. Claim 26 recites:
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`a second memory in which communication device
`identification codes of all of said user-defined
`communication remote devices are stored, said
`communication device identification codes being
`configured in a plurality of said user-defined message
`profiles.
`The Petition fails to show that this feature is taught in Shetty.
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`1 See Section III.C regarding Alarm.com’s inappropriate request for an
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`advisory opinion by the Board.
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`2 This CDIC limitation is also required by claims 30, 31, 37, 40 and 41, but
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`the CAFC affirmed the Board’s finding of patentability for those claims under an
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`alternate basis.
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`U.S. Patent No. 6,147,601
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`As Vivint explained in its Patent Owner Response (POR), the claims do not
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`just require that the system include a CDIC. Claim 26 recites that the CDICs are
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`“configured in a plurality of said user-defined message profiles.” The Petition did
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`not prove Shetty taught this feature for at least two reasons. First, Shetty does not
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`disclose email addresses or phone numbers. So, at best, the Petition is relying on
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`obviousness by inherency – without providing any legal analysis or evidence to
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`prove that theory. Alarm.com cannot fix those holes in the Petition now. Second,
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`even if such addresses and numbers are somehow inherently disclosed by virtue of
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`Shetty’s disclosure of email, pages and faxes as communication methods, Shetty is
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`silent on where such email addresses and phone numbers are stored or what they
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`identify. Thus, Shetty does not (and cannot) disclose CDICs “configured in a
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`plurality of said user-defined message profiles” as required by claim 26.
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`II. STATEMENT OF FACTS
`Alarm.com’s IPR petition was the second of five serial attacks that
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`Alarm.com brought on the ’601 patent, including four IPRs and one currently-
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`pending ex parte reexamination, in which Vivint recently filed a notice of appeal to
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`this Board. See IPR2015-02004; IPR2016-00155; IPR2016-01080; Control No.
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`90/014,007.
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`U.S. Patent No. 6,147,601
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`The entirety of the Petition’s analysis for claim 26 is reproduced below:
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`(Petition, 26.) Claims 27, 28 and 33-36 depend from claim 26, and Alarm.com’s
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`analysis for those claims essentially just refers back to claim 26. (Petition, 27, 38,
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`55.) Claim 26 recites that the claimed server includes a second memory in which
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`“communication device identification codes of all of said user-defined
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`communication remote devices are stored.” It also recites that the “communication
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`device identification codes [are] configured in a plurality of said user-defined
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`message profiles.” As the claim chart above illustrates, Alarm.com relies entirely
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`on Shetty for these elements.
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`U.S. Patent No. 6,147,601
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`Shetty is a very short reference. Its detailed description is less than three
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`columns of text. Alarm.com points to Shetty’s user profiles as the claimed
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`“plurality of said user-defined message profiles.” (Petition, 14-17.) Shetty states,
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`“A user profile database 106 contains information relating to all users of the data
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`manager including a user profile which defines which events will require that the
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`user be notified.” (Ex. 1103, Shetty, 2:18-21.) In other words, the profile defines
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`events. When an event occurs, a user is notified. Thus, “[e]ach profile may …
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`trigger a different mode or modes of communication (page, Email, fax).” (Id.,
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`2:59-61.) Shetty states that the “user profile defines the events which trigger the
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`notification and the method of notification,” i.e. the mode of notification, page,
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`email, or fax. (Id., 2:43-45.)
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`Despite contemplating these various modes of notification, Shetty does not
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`mention email addresses or phone numbers. Because Shetty does not teach this
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`information, it also is silent where this information would be stored.
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`Vivint’s POR explained these deficiencies of Shetty. For example, Vivint
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`stated, “there is nothing in Shetty to suggest that Shetty’s different modes of
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`communication correspond to specific remote devices, nor that they are
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`represented by identification codes within the [profile] database.” (POR, Paper 20,
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`37.) In other words, the modes of communication in Shetty do not necessarily
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`require CDICs. And, even if they did, Shetty says nothing about where such
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`U.S. Patent No. 6,147,601
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`identification codes would be stored, let alone disclose “communication device
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`identification codes configured in” the alleged message profiles as claimed.
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`III. ARGUMENT
`A. Shetty does not disclose email addresses or phone numbers, and
`even if argued they are inherent, Shetty does not disclose they are
`configured in its user profile database.
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`In its Remand Brief, Alarm.com claims that “Shetty teaches a ‘user profile
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`database’ that contains profiles defining … how [the] user is notified.”’ (Remand
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`Br., Paper 47, 5.) But claim 26 in the ’601 patent is more specific than that. It
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`recites that “communication device identification codes” are “configured in a
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`plurality of said user-defined message profiles.” Shetty mentions page, email, and
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`fax modes of communication, but does not mention email addresses or phone
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`numbers at all. Even assuming Alarm.com was trying to argue obviousness by
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`inherency (with no supporting evidence) that email addresses or phone numbers
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`must exist in Shetty to send the pages, faxes, and emails, Shetty still does not
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`disclose where such email addresses and phone numbers are stored. Because
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`Shetty does not disclose that any (allegedly implied) phone numbers or email
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`addresses are configured in its message profiles, as required by claim 26, Shetty
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`does not teach this feature.
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`The few passages in Shetty that Alarm.com relies on are each reproduced
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`below:
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`Case IPR2016-00116
`U.S. Patent No. 6,147,601
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`“A user profile database 106 contains information
`relating to all users of the data manager including a user
`profile which defines which events will require that the
`user be notified….” (Shetty, 2:18-21.)
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`“Each profile may … trigger a different mode or modes
`of communication (page, Email, fax).” (Id., 2:59-61.)
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`“[I]f the conditions of an alias for a particular user are
`met then the user is notified, as defined in the user
`profile. As stated above, the user may be notified by
`either an electronic mail message and/or a pager message
`and/or facsimile.” (Id., 3:16-20.)
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`“[U]ser profile defines the events which trigger the
`notification and the method of notification.” (Id., 2:43-
`45.)
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`The first three passages address only that the user profile defines when the
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`user is notified; in other words, the events, triggers, or “the conditions of an alias
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`for a particular user.” (Id., 3:16-20.) Those passages say nothing as to whether the
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`user profile specifies how the notification is to take place. The final passage states
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`that the “user profile defines the events which trigger the notification and the
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`method of notification.” (Id., 2:43-45.) Reading this passage to mean that the
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`“[u]ser profile defines … the method of notification” (id., 2:43-45)3, it still only
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`teaches that the profile defines the method of notification, that is, whether to use
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`email, page, or fax. Shetty makes no mention of the email addresses or page/fax
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`numbers at all, let alone says CDICs are configured in the message profile as
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`required by the claim.
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`In its Remand Brief, Alarm.com excerpts testimony from Vivint’s expert
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`Mr. Denning. (Remand Br., 6-7.) In the excerpted testimony, he agreed that “for
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`Shetty’s notification means to send out notifications,” phone numbers and email
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`addresses “would have to be stored.” (Id., (citing Ex. 1118, 48:13-18).) Again
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`though, Shetty is silent on where email addresses or phone numbers are stored.
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`Indeed, Shetty describes that user profile database 106 cannot send out
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`notifications alone. Instead, Shetty describes “the user is notified via a notification
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`means 112.” (Shetty, 2:42-43 (emphasis added).) It is more likely that any
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`(allegedly implied) email addresses or phone numbers are configured, defined, or
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`stored by notification means 112, not user profile database 106. And nowhere does
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`Shetty teach or suggest that the notification means 112 is part of the user profile
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`3 This is not the only possible reading. It is also possible that Shetty meant
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`“[U]ser profile defines the events which trigger [1] the notification and [2] the
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`method of notification.” (Id., 2:43-45.)
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`database 106. Indeed, Shetty’s Figures 1 (reproduced and annotated below)
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`illustrates them as separate components. Regardless, Shetty’s silence as to what
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`configures email addresses or page/fax numbers is fatal to Alarm.com’s ground of
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`unpatentability.
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`Email, faxes and pages are provided via
`notification means 112. (Shetty, 2:42-43.) If
`email addresses and phone numbers were
`configured at all in Shetty, they would more
`likely be configured in this component over
`user profile database 106
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`
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`Alarm.com bears the burden here and has provided no evidence that a skilled
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`artisan would interpret Shetty to have Alarm.com’s preferred meaning. The
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`declaration Mr. Zatarain submitted with the Petition merely parrots the Petition’s
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`claim charts and is of no help to Alarm.com’s position. (See Ex. 1107, Zatarain
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`U.S. Patent No. 6,147,601
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`Decl., ¶55.) In its Remand brief, Alarm.com cites to a number of paragraphs in Mr.
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`Zatarain’s Reply declaration. (See Remand Brief, 6 (citing Ex. 1130, ¶¶ 143, 151,
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`157, 162-164).) For example, Mr. Zatarain states that “Shetty discloses or renders
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`obvious the storage of phone numbers and email addresses.” (Ex. 1130, Zatarain
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`Reply Decl., ¶ 163.) Mr. Zatarain’s only mention of where these supposed
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`addresses are stored is in passing: “a PHOSITA would understand the ’601
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`Patent’s disclosure of CDICs with respect to cellular telephones to include only
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`telephone numbers, which were similarly stored by Shetty in its user profile
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`database.” (Ex. 1130, 151.) However, Mr. Zatarain provides no analysis or
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`evidence to support his statement that telephone numbers “were similarly stored by
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`Shetty in its user profile database.” (Id.) Thus, this statement is “entitled to little or
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`no weight.” 37 C.F.R. § 42.65(a).
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`Thus, even assuming that Shetty, implicitly or inherently, discloses an email
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`address or a phone number that satisfies the proper construction of communication
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`device identification code, Shetty does not teach or render obvious claim 26 and its
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`dependent claims. There is no record evidence to support a finding that any alleged
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`email addresses or phone numbers in Shetty are “configured in a plurality of said
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`user-defined message profiles” as claimed.
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`Case IPR2016-00116
`U.S. Patent No. 6,147,601
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`B. The Board should refuse Alarm.com’s invitation to make an
`advisory opinion on claims not at issue in this remand.
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`Alarm.com invites the Board to issue an advisory opinion on claims not at
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`issue here, asking the Board to “state that its finding of patentability regarding the
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`NSM claims is based solely on its conclusions regarding the ‘normal status
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`message’ limitation recited in claim 30.”’ (Remand Br., 8.) Those claims—claims
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`30, 31, 37, 40 and 41— were already held patentable by the Board and affirmed by
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`the Federal Circuit. (FWD, 63-69; Vivint, Inc.,754 Fed.Appx. at *1005-06). Their
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`patentability cannot be revisited. The record is clear; no “clarification” is needed.
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`The only possible motivation for requesting such an opinion is the hope that the
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`Board would say something that Alarm.com could later twist in district court for
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`damages or other ancillary purposes. The Board should refuse Alarm.com’s
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`request.
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`IV. CONCLUSION
`In sum, Alarm.com has not proven by a preponderance of the evidence that
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`Shetty (1) discloses or suggests either telephone numbers or email addresses or (2)
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`that its user profile configures or stores a phone number or an email address. For
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`this reason, the Board should hold claims 26-28 and 33-36 patentable.
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`Case IPR2016-00116
`U.S. Patent No. 6,147,601
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
`
`/Jason D. Eisenberg/
`
`Robert Greene Sterne, Reg. No. 28,912
`Jason D. Eisenberg, Reg. No. 43,447
`Joseph E. Mutschelknaus, Reg. No. 63,285
`Attorneys for Patent Owner
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`Date: April 25, 2019
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`Case IPR2016-00116
`U.S. Patent No. 6,147,601
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`RESPONSE TO PETITIONER’S OPENING BRIEF ON REMAND was
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`served electronically via e-mail on April 25, 2019, in its entirety on the following:
`
`William H. Mandir (Lead Counsel)
`David P. Emery (Back-up Counsel)
`Richard J. Stark (Back-up Counsel)
`Marc J. Khadpe (Back-up Counsel)Teena-Ann
`V. Sankoorikal (Back-up Counsel)
`
`
`wmandir@sughrue.com
`demery@sughrue.com
`rstark@cravath.com
`mkhadpe@cravath.com
`tsankoorikal@levinelee.com
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg, Reg. No. 43,447
`Attorney for Patent Owner
`
`
`
`
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`Date: April 25, 2019
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`13008381_1.docx
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