Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: January 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)1
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`On January 19, 2016, Petitioner requested a telephone conference
`with the panel regarding Patent Owner’s December 17, 2015, filing of
`
`
`1 This Order addresses an issue pertaining to all nine identified cases.
`Therefore, we exercise our discretion to issue one Order to be filed in each
`
`
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: January 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)1
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`On January 19, 2016, Petitioner requested a telephone conference
`with the panel regarding Patent Owner’s December 17, 2015, filing of
`
`
`1 This Order addresses an issue pertaining to all nine identified cases.
`Therefore, we exercise our discretion to issue one Order to be filed in each
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`Requests for Certificates of Correction (“Requests”) with respect to each of
`the four patents involved in the above-captioned proceedings. Pursuant to
`Petitioner’s request, we held a telephone conference on January 27, 2016.
`Counsel for the parties participated, along with Administrative Patent Judges
`Arpin, Boudreau, and Zecher.
`BACKGROUND
`Petitioner filed Petitions in these proceedings on various dates ranging
`from September 28, 2015, to November 9, 2015, seeking inter partes review
`of certain claims of U.S. Patent Nos. 6,147,601,2 6,462,654 B1,3 6,535,123
`B2,4 and 6,717,513 B15 (collectively, “the Involved Patents”). On
`December 17, 2015, Patent Owner filed the Requests with respect to the
`respective Involved Patents in the Office. Patent Owner did not request
`authorization from the panel prior to filing the Requests and did not notify
`the panel of the filing of the Requests upon their filing. On January 8, 2016,
`Patent Owner filed Preliminary Responses in Cases IPR2015-01995,
`
`
`case. The parties are not authorized to use this style heading for any
`subsequent papers.
`2 See Case IPR2015-02004 (Paper 1); Case IPR2016-00116 (Paper 1); Case
`IPR2016-00155 (Paper 1).
`3 See Case IPR2015-02003 (Paper 1); Case IPR2016-00161 (Paper 1).
`4 See Case IPR2015-01995 (Paper 1); Case IPR2016-00173 (Paper 1).
`5 See Case IPR2015-01997 (Paper 1); Case IPR2016-00129 (Paper 1).
`
` 2
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`IPR2015-01997, IPR2015-02003, and IPR2015-02004.6 Those Preliminary
`Responses reference the respective Requests.7
`Petitioner represented during the telephone conference that it disputes
`Patent Owner’s characterization of the corrections in the Requests as being
`“of a clerical or typographical nature, or of a minor character,” at least with
`respect to certain of the corrections. 35 U.S.C. § 255.
`DISCUSSION
`Under 37 C.F.R. § 42.3, “[t]he Board may exercise exclusive
`jurisdiction within the Office over every involved application and patent
`during [a] proceeding, as the Board may order” (emphases added). Under
`37 C.F.R. § 42.2, “Proceeding means a trial or preliminary proceeding,”
`where a “Preliminary Proceeding begins with the filing of a petition for
`instituting a trial and ends with a written decision as to whether a trial will
`be instituted.”
`Pursuant to 37 C.F.R. § 42.3, we hereby exercise jurisdiction over the
`Requests, filed as they were after the Petitions in these proceedings, pending
`our determination whether or not to institute inter partes review. For any
`
`
`6 Patent Owner’s Preliminary Responses in the remaining cases are due on
`February 5, 2016 (Case IPR2016-00116), February 16, 2016 (Cases
`IPR2016-00129, IPR2016-00155, and IPR2016-00161), and February 18,
`2016 (Case IPR2016-00173)
`7 Case IPR2015-01995 (Paper 9, 2 n.1); IPR2015-01997 (Paper 9, 34 n.4);
`IPR2015-02003 (Paper 9, 27); IPR2015-02004 (Paper 9, iv n.1).
`
` 3
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`claims for which correction is sought and for which we institute inter partes
`review, we order that consideration of the Requests by the Certificate of
`Correction Branch is stayed and will maintain jurisdiction over the Requests
`for the pendency of trial, including making a determination whether or not
`the Requests satisfy 35 U.S.C. § 255 and 37 C.F.R. §§ 1.322 and 1.323.
`Otherwise, if we determine not to institute review of any claims for which
`correction is sought, Patent Owner’s Requests will be returned to the
`jurisdiction of the Certificate of Correction Branch for further action.
`Further, because Petitioner did not have the benefit of having the
`proposed corrected claim language in the Requests at the time the Petitions
`were filed, and yet Patent Owner did have the benefit of those proposed
`corrections when it filed its Preliminary Responses, we authorize Petitioner
`to file a reply brief, no more than five pages in length, in each of the four
`cases in which Patent Owner has already filed a Preliminary Response (i.e.,
`Cases IPR2015-01995, IPR2015-01997, IPR2015-02003, and IPR2015-
`02004). Petitioner’s reply briefs shall be limited to arguments, if any, as to
`(1) why Patent Owner’s proposed corrections are not merely “of a clerical or
`typographical nature, or of a minor character,” such that the Certificate of
`Correction for the respective patent should not be entered; (2) why Petitioner
`was unable to discern the requested corrections unassisted8; and (3) where
`
`
`8 In this regard, we note that Petitioner appears to have been able to discern
`the requested correction with respect at least to U.S. Patent No. 6,717,513
`B1. See Case IPR2015-01997 (Paper 1, 18) (recognizing that “[t]here is no
`
` 4
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`the references cited in the respective Petition disclose the corrected claim
`elements. Petitioner also is authorized to file a brief, subject to the same
`limitations set forth above for the reply briefs, in each of the five cases in
`which Patent Owner has not yet filed a Preliminary Response (i.e., Cases
`IPR2016-00116, IPR2016-00129, IPR2016-0155, IPR2016-00161, and
`IPR2016-00173).
`No further briefing by Patent Owner is authorized at this time in Cases
`IPR2015-01995, IPR2015-01997, IPR2015-02003, and IPR2015-02004, in
`which Patent Owner already has filed a Preliminary Response. The Board,
`nonetheless, will determine upon review of Petitioner’s reply briefs whether
`or not to authorize additional briefing from Patent Owner.
`As we explained during the telephone conference, Patent Owner is not
`authorized to file any papers in the Office while a proceeding is pending
`before the Board with respect to an involved patent, except with the Board’s
`prior authorization. Despite Patent Owner’s suggestion during the
`telephone conference that this is inconsistent with non-precedential
`decisions by other panels, we note that the same instruction was
`
`
`antecedent basis for the ‘message generating mechanism’ of claim 9 unless
`the ‘said message generating mechanism’ of claim 9 is intended to refer to
`the ‘message generating means’ of claim 8” and recognizing that “[s]uch an
`error in claim drafting can be corrected ‘by interpretation of the patent’
`where, as here, the error is not ‘subject to reasonable debate’ and where the
`‘prosecution history does not suggest a different interpretation.’”); Case
`IPR2016-00129 (Paper 1, 16) (same).
`
` 5
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`communicated by the Board in ASML Netherlands B.V. v. Energetiq
`Technology, Inc., a case cited by Patent Owner during the telephone
`conference. See IPR2015-01375 (Ex. 2003) (instructing that the patent
`owner “should not file any papers, including a request to a department of the
`Office outside of the PTAB to issue a Certificate of Correction, while the
`case is pending before the PTAB. 37 CFR 42.3.”). Indeed, in the Board’s
`decision granting the patent owner’s request in that case, it was significant
`that—unlike in the present proceedings—the errors sought to be corrected
`were the Office’s errors, not the patentee’s, and were “disclosed clearly in
`the records of the application”; and “[m]ore importantly,” the patent owner
`confirmed that the claim sought to be corrected “is not involved in this inter
`partes review” and “[a]s such, a certificate of correction for the
`aforementioned typographical errors will not impact this review.”
`(Paper 11, 2–3). Notably, in Pharmacosmos A/S v. Luitpold Pharms., Case
`IPR2015-01490, also cited by Patent Owner, the patent owner affirmatively
`sought authorization from the Board prior to filing a request or motion for
`certificate of correction. Paper 8, 2–3. And in a third case cited by Patent
`Owner, International Flavors & Fragrances Inc. v. ZoomEssence, Inc., Case
`IPR2015-01418, the patent owner was not seeking to file a request for a
`certificate of correction at all, but was instead seeking to file a copy of a
`certificate of correction that issued from a request filed more than four
`months before the petition was filed. Paper 8, 2–3. Even then, the patent
`owner sought authorization from the Board prior to filing that copy. Id. at
`
` 6
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`1–2. Consequently, Patent Owner’s citation to these non-precedential panel
`decisions does not persuade us that Patent Owner’s failure to notify the
`
` 7
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`Board promptly of the filing of its Requests in the each of the present Cases
`was justified.
`
` It is
`ORDERED that Patent Owner’s Requests for Certificates of
`Correction filed December 17, 2015, with respect to U.S. Patent Nos.
`6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1 are hereby stayed
`pending the Board’s decision on institution in each of Cases IPR2015-
`01995, IPR2015-01997, IPR2015-02003, IPR2015-02004, IPR2016-00116,
`IPR2016-00129, IPR2016-00155, IPR2016-00161, and IPR2016-00173;
`FURTHER ORDERED that Petitioner is authorized to file a brief, no
`more than five pages in length, and not later than the close of business on
`February 3, 2016, in each of Cases IPR2015-01995, IPR2015-01997,
`IPR2015-02003, IPR2015-02004, IPR2016-00116, IPR2016-00129,
`IPR2016-00155, IPR2016-00161, and IPR2016-00173, limited to
`arguments, if any, as to (1) why the corrections proposed in the respective
`Requests are not merely “of a clerical or typographical nature, or of a minor
`character,” such that the Certificates of Correction should not be entered;
`(2) why Petitioner was unable to discern the requested corrections
`unassisted; and (3) where the references cited in the respective petition
`disclose the corrected claim elements; and
`
` 8
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`
`FURTHER ORDERED that no additional filings by Patent Owner are
`authorized at this time in Cases IPR2015-01995, IPR2015-01997, IPR2015-
`02003, and IPR2015-02004.
`
` 9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01995, Case IPR2015-01997, Case IPR2015-02003,
`Case IPR2015-02004, Case IPR2016-00116, Case IPR2016-00129,
`Case IPR2016-00155, Case IPR2016-00161, and Case IPR2016-00173
` (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1)
`
`For PETITIONER:
`William H. Mandir
`Brian K. Shelton
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`bshelton@sughrue.com
`
`
`
`For PATENT OWNER:
`
`Robert Greene Sterne
`Jason D. Eisenberg
`Ryan Richardson
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`jasone-PTAB@skgf.com
`rrichardson-PTAB@skgf.com
`
`
`10
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