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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 REPLY TO PATENT OWNER’S RESPONSE 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 only argument Vivint made in its Patent Owner’s Response concerning
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`CDICs was that email addresses and telephone numbers are not CDICs. If the
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`Board had decided that issue in favor of Alarm.com, the relevant claims would
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`have been found unpatentable. The Federal Circuit reversed on the CDIC
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`interpretation issue. Therefore the relevant claims must now be held unpatentable.
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`The arguments Vivint presents on remand are entirely new. As such, all of
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`Vivint’s arguments have been waived. Scheduling Order, Paper 15 at 3 (“any
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`arguments for patentability not raised in the response will be deemed waived”); see
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`also Broad Ocean Techs., LLC v. NIDEC Motor Corp., IPR2015-01617, Paper 70
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`at 36 (P.T.A.B. April 25, 2019) (noting “new and materially different argument[s]”
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`are “improper” on remand).
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`If the Board considers Vivint’s belated, improper arguments, they must be
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`rejected. Vivint’s contentions consist solely of unsubstantiated attorney arguments
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`that are flatly inconsistent with the Board’s prior findings and the record evidence.
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`I.
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`ARGUMENT
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`Vivint argues that although Shetty discloses sending email messages and fax
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`messages, the reference fails to disclose (1) email addresses or telephone numbers,
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`or (2) that email addresses and telephone numbers are configured in message
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`profiles. Patent Owner’s Resp. to Pet’r’s Opening Br. on Remand, 2 (“Resp. Br.”).
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`These contentions are untenable.
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`1
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`Disclosure of email addresses and phone numbers. Vivint asserts that
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`“Shetty mentions page, email, and fax modes of communication, but does not
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`mention email addresses or phone numbers at all.” Id. at 5 (emphasis in original).
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`But, of course, the Board has already recognized that email addresses and
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`telephone numbers are disclosed in Shetty. See Final Written Decision, Paper 39 at
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`52 (discussing “Shetty’s telephone numbers and email addresses”) (“FWD”). The
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`relevant claims were held patentable only because the Board found that Shetty’s
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`telephone numbers and email addresses did not meet its interpretation of CDIC.
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`Id.
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`In any event, Vivint’s argument amounts to a contention that a prior art
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`reference can only disclose an element if it does so in ipsissimis verbis—which is
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`not the proper test for obviousness. Google Inc. v. Intellectual Ventures II LLC,
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`701 F. App’x 946, 953 (Fed. Cir. 2017) (vacating finding of patentability where
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`alleged lack of disclosure was based on a “word search” of the prior art); see also
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`In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (explaining that a “reference
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`need not satisfy an ipsissimis verbis test” to disclose a claim limitation). A prior
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`art reference “must be considered not only for what it expressly teaches, but also
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`for what it fairly suggests” to one skilled in the art. In re Burckel, 592 F.2d 1175,
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`1179 (C.C.P.A. 1979); see also In re Preda, 401 F.2d 825, 826 (C.C.P.A. 1968)
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`(“[I]t is proper to take into account not only specific teachings of the reference but
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`2
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`also the inferences which one skilled in the art would reasonably be expected to
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`draw therefrom.”).
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`Here, the evidence demonstrates that one skilled in the art would understand
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`Shetty’s disclosures to teach or suggest the use of email addresses and telephone
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`numbers to identify devices that are to receive email, pager and fax notifications.
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`Both parties’ experts properly reviewed Shetty from the perspective of one having
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`ordinary skill in the art, and came to the inescapable conclusion that Shetty taught
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`the use of email addresses and telephone numbers to send notifications.
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`Indeed, it is undisputed that to send an email message one must use an email
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`address, and to send a fax or pager message, one must use a telephone number.
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`Alarm.com’s expert, Mr. Zatarain, explained that Shetty’s profiles were
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`customized with the “operator’s email address, pager number, or fax number”. Ex.
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`1130 ¶ 48; see also id. at ¶¶ 143, 151, 157, 162, 163, 164. Vivint’s expert, Mr.
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`Denning, agreed that “for Shetty’s notification means to send out notifications”,
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`email addresses and telephone numbers “would have to be stored”. Ex. 1118,
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`48:13-18; see also Ex. 2010 ¶¶ 130, 131.
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`Storage of email addresses and telephone numbers in message profiles.
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`Vivint contends that “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.” Resp.
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`Br., 2. But, in fact, the Board has already found that “Shetty’s user profile . . .
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`3
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`specifies at least one communication device (e.g., device capable of receiving
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`email, pager, fax, etc.) to which an outgoing message is routed”. FWD, 50. Vivint
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`made no argument to the contrary in the prior proceedings and cannot now revisit
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`the Board’s finding. Combined with the Federal Circuit’s ruling that email
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`addresses and telephone numbers are CDICs, the Board’s finding forecloses
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`Vivint’s belated contention.
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`In any event, the record evidence fully supports that email addresses and
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`telephone numbers are stored in the user profiles in Shetty’s user profile database.
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`Shetty discloses a user profile database that “contains information relating to all
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`users of the data manager including a user profile”, and that the user profiles define
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`the “method of notification”. Ex. 1103, 2:18-21; 2:43-45. The reference further
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`explains that “if the conditions of an alias for a particular user are met then the
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`user is notified, as defined in the user profile”. Id. at 3:16-18 (emphasis added).
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`Thus, contrary to Vivint’s assertion that Shetty is silent (Resp. Br., 7), in actuality
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`Shetty explains that the information about how a user is notified is defined in the
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`user profiles contained in the user profile database. Alarm.com’s expert, Mr.
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`Zatarain, relied on Shetty’s disclosures in identifying the user profile database as
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`the claimed “memory” where the CDICs are stored and configured in user-defined
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`message profiles. Ex. 1107, 55. Mr. Zatarain also explained Shetty’s user profiles
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`in detail (Ex. 1130 ¶¶ 44-50), including the fact that email addresses and telephone
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`4
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`numbers are configured therein (id. ¶ 48). See also id. at ¶ 151 (“telephone
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`numbers . . . were similarly stored by Shetty in its user profile database”). Vivint’s
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`expert, Mr. Denning, similarly opined that the “routing instructions” for notifying
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`users were stored in Shetty’s user profiles. Ex. 2010 ¶ 125 (“Shetty’s user profile
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`includes routing instructions for notifying the single user associated with that user
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`profile.”); see also Patent Owner’s Resp., 36. This confirms that email addresses
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`and telephone numbers, used for routing notifications to users, were stored in the
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`user profiles.
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`Vivint speculates that “[i]t is more likely that . . . email addresses or phone
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`numbers are configured, defined, or stored by notification means 112, not user
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`profile database 106.” Resp. Br., 7. But there is no evidence for such a contention.
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`Attorney conjecture that email addresses and phone numbers might be stored in a
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`functional box in a figure, rather than in the user profile database described as
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`“contain[ing] information relating to all users”, cannot overcome “competent,
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`substantiated expert testimony” and other record evidence. Invitrogen Corp. v.
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`Clontech Labs., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005).
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`II. CONCLUSION
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`For the foregoing reasons, Vivint’s arguments should be rejected.
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`5
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`Dated: May 9, 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
`
`Respectfully submitted,
`
`/William H. Mandir/
`William H. Mandir
`Registration No. 32,156
`
`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
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`6
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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 May 9, 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: May 9, 2019
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`Respectfully submitted,
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`/William H. Mandir/
`William H. Mandir
`Registration No. 32,156
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`7
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