UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARMCOM INCORPORATED,
`
`Petitioner
`
`V.
`
`VIVINT, INC.
`Patent Owner
`
`Case IPR2016-00116
`
`US. Patent No. 6,147,601
`
`PATENT OWNER’S SUR—REPLY TO PETITIONERS’ REPLY TO
`
`PATENT OWNER’S RESPONSE BRIEF ON REMAND
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARMCOM INCORPORATED,
`
`Petitioner
`
`V.
`
`VIVINT, INC.
`Patent Owner
`
`Case IPR2016-00116
`
`US. Patent No. 6,147,601
`
`PATENT OWNER’S SUR—REPLY TO PETITIONERS’ REPLY TO
`
`PATENT OWNER’S RESPONSE BRIEF ON REMAND
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`
`
`Case IPR2016-00116
`
`Patent 6,147,601
`
`In its principal brief, Vivint established that Shetty fails to teach a CDIC
`
`configured in a message profile as claimed. (Paper 51, passim.) In its Reply,
`
`Alarm.com argues that (i) Vivint’s arguments are waived, (ii) Vivint is asking too
`
`much of Shetty, and (iii) Alarm.com’s declarant fills any holes that may exist in
`
`Shetty’s disclosure. (Paper 52, passim.) Alarmcom’s arguments fail.
`
`I.
`
`The arguments Vivint presented on remand are not waived, and it is
`appropriate and necessary for the Board to consider them.
`
`In its Response, Alarmcom contends that “[t]he only argument Vivint made
`
`in its Patent Owner’s Response concerning CDICs was that email addresses and
`
`telephone numbers are not CDICs.” (Id, 1.) To the contrary, however, the POR
`
`argued that “there is nothing in Shetty to suggest that Shetty’s different modes of
`
`communication correspond to specific remote devices, nor
`
`that
`
`they are
`
`represented by identification codes within the [profile] database.” (POR, Paper
`
`20, 37 (emphasis added).) Vivint quoted from this portion of the FOR in its
`
`principal brief on remand (Paper 51, 4), yet Alarmcom did not explain why this
`
`argument in the POR did not preserve the argument presented here.
`
`In its earlier decision, the PTAB didn’t need to reach the issue of whether
`
`Shetty taught email addresses or telephone numbers as being configured in the user
`
`profile database, because the PTAB found that, even if they were, they were not
`
`CDICs as claimed. In the prior proceeding, the PTAB stated that email addresses
`
`and phone numbers do not qualify as CDICs “because they do not identify
`
`-1-
`
`
`
`Case lPR2016—001 16
`
`Patent 6,147,601
`
`uniquely a specific device.” (FWD, 52.) Therefore, the Board held that “Shetty
`
`does not teach or suggest the recited ‘communication device identification codes’”
`
`and thus did not need to determine whether such addresses and phone numbers are
`
`disclosed in Shetty as being “configured in a plurality of said user—defined message
`
`profiles” as claimed. ([61, 17, 52.) On appeal, the Federal Circuit reversed the
`
`PTAB’s conclusion that CDIC excludes email addresses and phone numbers.
`
`(CAFC Decision, 9—11.) The Federal Circuit did not address the issue of whether
`
`such addresses and phone numbers, if they did exist in Shetty, are “configured in a
`
`plurality of said user—defined message profiles” as claimed. Rather, the Federal
`
`Circuit asked the Board to answer that question on remand.
`
`II.
`
`Shetty lacks explicit disclosure of email and telephone numbers, let
`alone where they are stored.
`
`Alarm.corn argues that Vivint
`
`is requiring Shetty to provide disclosure
`
`z'psissimis verbis, or in the same words. (Paper 52, 2.) That is untrue. For example,
`
`Vivint is not arguing that Shetty’s “user profile” is not the ’601 patent’s “message
`
`profile” because the two documents use different words. That said, to teach the
`
`claims, Shetty must still have words stating that its user profile configures a CDIC.
`6“
`
`As described in Vivint’s principal brief, Shetty’s statement that the
`
`[u]ser profile
`
`defines
`
`the method of notification’... (Id., 2243—45),” only teaches that the
`
`profile defines the method of notification, that is, whether to use email, page, or
`
`fax. (Paper 51, 4.) Alarm.com’s argument claiming that “[a] prior art reference
`
`-2-
`
`
`
`Case IPR2016—001 16
`
`Patent 6,147,601
`
`‘must be considered not only for what it expressly teaches, but also for what it
`
`fairly suggests’ to one skilled in the art” implicitly acknowledges that Shetty lacks
`
`an explicit disclosure of email addresses or phone numbers. (Paper 52, 2.) Shetty
`
`never teaches that CDICs are configured in the message profile as claimed.
`
`III. Neither Alarm.com nor its declarant provide basis for obviousness or
`
`inherency.
`
`Lacking explicit disclosure, Alarmcom turns to testimony from its
`
`declarant, not offered with the Petition, but improperly late in the proceeding with
`
`Alarmcom’s reply. (Id, 3, 5; see also 2018 Trial Practice Guide Update, 14.) But,
`
`none of this testimony establishes what is needed for Alarmcom to show that such
`
`a feature is inherent or obvious over Shetty. For inherency, Alarm.com’s declarant
`
`would need to show that configuring the CDICs in Shetty’s user profile is
`
`somehow a “necessary feature or result” of Shetty. Taro Co. v. Deere & Ca, 355
`
`F.3d 1313, 1321 (Fed. Cir. 2004). For obviousness, Alarm.com’s declarant would
`
`need to provide an articulated reason why a skilled artisan would modify Shetty to
`
`include CDICs configured in its user profile. KSR 1m”! Co. v. Teleflex Inc, 550
`
`US. 398 (2007). The cited testimony fails to do either. Thus, Alarmcom has not
`
`shown that a CDIC configured in a message profile is disclosed in or obvious over
`
`Shetty.
`
`IV. Conclusion
`
`For these reasons, the CDIC claims are patentable over Shetty.
`
`-3-
`
`
`
`Case IPR2016-00116
`
`Patent 6,147,601
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`@«ffirm Sta/we
`
`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
`
`Date: May 16, 2019
`
`1100 New York Avenue, NW
`
`Washington, DC. 20005
`(202) 371-2600
`
`
`
`Case IPR2016-00116
`
`Patent 6,147,601
`
`CERTIFICATION OF SERVICE 137 C.F.R. § 42.6(en
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing PATENT OWNER’S SUR-REPLY TO PETITIONERS’ REPLY
`
`TO PATENT OWNER’S RESPONSE BRIEF ON REMAND was
`
`electronically served via e—mail on May 16, 2019, in its entirety on the following
`
`counsel for Petitioner:
`
`William H. Mandir (Lead Counsel) wmandir@sughrue.com
`David P. Emery (Back-up Counsel) demery@sughrue.com
`Richard J. Stark (Back—up Counsel)
`rstark@cravath.com
`Marc J. Khadpe (Back-up Counsel) mkhadpe@cravath.com
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`4744mm
`
`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
`
`Date: May 16, 2019
`
`1 100 New York Avenue, NW
`
`Washington, DC. 20005
`(202) 371-2600
`
`1316610571.docx
`
`
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