Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Entered: April 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`
`Case IPR2U016-UU155
`Patent 6,147,601
`
`Before MICHAEL R. ZECHER, JAMESB. ARPIN, and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`ZECIIER, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. § 314(a) and 37 CFR. $ 42.108
`
`
`571-272-7822
`
`Paper No. 14
`Entered: April 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`
`Case IPR2U016-UU155
`Patent 6,147,601
`
`Before MICHAEL R. ZECHER, JAMESB. ARPIN, and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`ZECIIER, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. § 314(a) and 37 CFR. $ 42.108
`
`
`
`IPR2016-00155
`Patent 6,147,601
`
`I. INTRODUCTION
`
`Petitioner, Alarm.com Incorporated (“Alarm.com”’),filed a Petition
`
`requesting an inter partes review of claims 1-3, 22—24, 26, 30, 32, 42, and
`
`43 of U.S. Patent No. 6,147,601 (Ex. 1201, “the ’601 patent”). Paper 1
`
`(“Pet.”). Patent Owner, Vivint, Incorporated (“Vivint”), filed a Preliminary
`
`Response. Paper 12 (Prelim. Resp.”). We also authorized Alarm.com to
`
`file a Brief limited to addressing certain aspects of Vivint’s Request for
`
`Certificate of Correction for the ’601 patent, which was filed on December
`
`17, 2015. Paper 9. Alarm.com filed its Brief shortly before Vivintfiled its
`
`Preliminary Response. Paper 11 (“Pet. Brief”).
`
`Under35 U.S.C. § 314(a), an inter partes review may notbeinstituted
`
`unless the information presented in the Petition shows“there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Taking into account the arguments
`
`presented in Vivint’s Preliminary Response, we concludethat the
`
`information presented in the Petition does not establish that there is a
`
`reasonable likelihood that Alarm.com would prevail in challenging any of
`
`claims 1-3, 22—24, 26, 30, 32, 42, and 43 of the ’601 patent as unpatentable
`
`under 35 U.S.C. § 103(a). We, therefore, deny the Petition.
`
`A. Related Matters
`
`The ’601 patent is involved in a district court case titled Vivint, Inc. v.
`
`Alarm.com Inc., No. 2:15-cv-00392-CW-BCW (D. Utah 2015). Pet. 1;
`
`Paper 7, 2. In addition to this Petition, Alarm.com filed petitions
`
`challenging certain subsets of claims of the ’601 patent in the following two
`
`cases: (1) Case IPR2015-02004, Paper 1; and Case IPR2016-00116, Paper
`
`
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`IPR2016-00155
`Patent 6,147,601
`
`1. Pet. 1; Paper 7, 1. Alarm.com also filed other petitions challenging the
`
`patentability of certain subsets of claims in the following patents owned by
`
`Vivint: (1) U.S. Patent No. 6,462,654 B1 (Cases IPR2015-02003 and
`
`IPR2016-00161); (2) U.S. Patent No. 6,535,123 B2 (Cases IPR2015-01995
`
`and IPR2016-00173); (3) U.S. Patent No. 6,717,513 B1 (Case IPR2015-
`
`01997 and IPR2016-00129); (4) U.S. Patent No. 6,924,727 B2 (Cases
`
`TIPR2015-01977 and IPR2015-02008); and (5) U.S. Patent No. 7,884,713 Bl
`
`(Cases IPR2015-01965 and IPR2015-01967). Pet. 1; Paper 7, 1-2.
`
`B. The ’601 Patent
`
`The ’601 patent, entitled “Electronic Message Delivery System
`
`Utilizable in the Monitoring of Remote Equipment and Method of Same,”
`
`issued November14, 2000, from U.S. Patent Application No. 09/317,235,
`
`filed May 24, 1999. Ex. 1201, at [54], [45], [21], [22]. The 601 patent
`
`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`
`January 9, 1999. Jd. at [60], 1:6—7.
`
`The ’601 patent describes systems and methods for monitoring remote
`
`equipment such as “devices .. . employed in heating, ventilating, and [air
`
`conditioning] (HVAC) systems.” Ex. 1201, Abstract, 1:11-14. The ’601
`
`patent explains that “[iJt is desirable to be able to monitor remotely
`
`equipmentthat may require periodic preventive maintenance and/or that may
`
`require rapid response time should a catastrophic failure occur.” Jd. at 1:16—
`
`19. According to the ’601 patent, prior art systems were limited insofar as
`
`they did not “allow for sufficient flexibility in routing fault messages to a
`
`variety of different potential recipients of such messagesvia a variety of
`
`different media, depending on the urgencyornature ofthe fault.” Id. at
`
`1:66—2:3. The ’601 patent provides, as an example, that an HVAC customer
`
`3
`
`
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`IPR2016-00155
`Patent 6,147,601
`
`may wantto send “certain non-emergency condition notifications(e.g., filter
`
`needs cleaning) to certain individuals (e.g., contractor/maintenance
`
`personnel) via a certain medium (e.g., e-mail) and emergency condition
`
`notifications (e.g., low or high refrigerant pressure) to other individuals
`
`(building owner, contractor, etc.) via other means(e.g., via beeper or other
`
`personal communication device).” Jd. at 2:5-14. “Such a list of who to
`
`contact via what means depending on which fault has occurred may be
`
`referred to as a ‘messageprofile.’” Jd. at 2:14-16. According to the ’601
`
`patent, conventional systemsdid not allow for “easy customer modifications
`
`to the message profile.” Jd. at 2:21—22.
`
`The ’601 patent purportedly solves these problemsby disclosing a
`
`system for remotely monitoring electrical or mechanical equipmentthat can
`
`deliver fault notification messagesto different individuals for different fault
`
`conditions via different electronic media, and in which a customer may
`
`modify its message profile interactively. Ex. 1201, 2:33-41. Figure 1 of the
`
`°601 patent, reproduced below,illustrates a schematic diagram of the
`
`preferred ernbodimentof this system. /d. at 3:24—25, 5:38-39.
`
`
`
`
`
`IPR2016-00155
`Patent 6,147,601
`
`As shownin Figure I, system 50 monitors existing pieces of
`
`electronic equipment, such as air-conditioner 2, boiler 3, motorstarter 4,
`
`heater 5, or any other equipmentthat a prospective user desires to monitor.
`
`Ex. 1201, 5:39-42. Each piece of equipmentis fitted with interface 10 that
`
`periodically sendsa status signal to electronic message delivery server 1
`
`indicating whether the piece of equipment andits corresponding interface
`
`are functioning correctly. Jd. at 5:43-47. When a predetermined
`
`“exception” condition, e.g., a fault condition, occurs in a piece of equipment
`
`being monitored, interface unit 10 sends a messageto electronic message
`
`delivery server 1. Jd. at 5:47-51. Electronic message delivery server 1] then
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`routes the message to the appropriate user interface, such as email 6, fax 7,
`
`pager8, voice 9, etc., according to a messageprofile configured by the user
`
`via user-webclient 121 connected to Internet 122. Jd. at 5:51-55, Fig. 1.
`
`In the described systems and methods, a sensor in communication
`
`with a piece of remote equipment determinesthe state of at least one
`
`parameter of the remote equipment. Ex. 1201, 2:48—50, 2:55-56. When the
`
`sensor detects an “exception” condition,i.e., an operating condition thatis
`
`either out of the ordinary or beyond nominal parameters, in the remote
`
`equipment, an interface unit connected to the sensor and having a message
`
`generating mechanism generates an incoming exception message and
`
`forwards the message to a central computer server. Jd. at 2:56-65. The
`
`server forwards at least one outgoing exception messageto at least one
`
`predetermined user-defined end device based on the incoming exception
`
`message. Id. at 2:65-67.
`
`
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`IPR2016-00155
`Patent 6,147,601
`
`C. Illustrative Claims
`
`Ofthe challenged claims, claims 1, 22, 42, and 43 are independent.
`
`Independentclaims 1 and 42 are directed to methods of monitoring remote
`
`equipment, whereas independentclaims 22 and 43 are directed to systems
`
`for performing the same. Claims 2 and 3 directly or indirectly depend from
`
`independentclaim 1; and claims 23, 24, 26, 30, and 32 directly or indirectly
`
`depend from independent claim 22. Independent claims 1 and 22 are
`
`illustrative of the challenged claims and are reproduced below:
`
`1. A method of monitoring remote equipment comprising
`the stepsof:
`a) determininga state of at least one parameterofat least one
`piece of the remote equipment;
`b) communicating a messageindicative of the state from the
`piece of remote equipment to a computerserver as an
`incoming message;
`c) enabling a user to remotely configure or modify a user-
`defined messageprofile containing outgoing message
`routing instructions, the user-defined message profile being
`storable on the computerserver;
`d) determining whether an incoming message is an incoming
`exception messageindicative of improper operation of the
`piece of remote equipment;
`e) if itis determined in step d) that an incoming messageis an
`incoming exception message, forwardingat least one
`outgoing exception message based on the incoming message
`to at least one user-defined communication device
`specifiable in the user-defined messageprofile,
`wherein the user can remotely configure or modify the user-
`defined messageprofile by remotely accessing the computer
`server.
`
`Ex. 1201, 8:51-9:6.
`
`
`
`IPR2016-00155
`Patent 6,147,601
`
`22. A system for monitoring remote equipment, comprising:
`a sensorin local communication with a piece of remote
`equipment, said sensor detecting a state of at least one
`parameter of the piece of remote equipment;
`an interface unit, locally connected to said sensor, said interface
`unit having a message generating mechanism; and
`a computer server in remote communication with said interface
`unit, said server adapted to receive messages generated by
`said interface unit, said computer server having a user
`interface, a user being capable of remotely accessing said
`computerservervia said user interface to remotely configure
`a user-defined messageprofile containing outgoing message
`routing instructions,
`wherein when said sensor detects an exception condition in the
`piece of remote equipment,said interface unit generates an
`incoming exccption message indicative of the exception
`condition and forwards said messageto said server,
`
`and wliciein said server forwardsat least one outgoing
`exception messageto at least one predctcrmined user-
`defined remote communication device based on said
`incoming exception messageas specified in said user-
`defined messageprofile.
`
`Id. at 10:43-11:2.
`
`D. References Relied Upon
`
`Alarm.com relies upon the following references:
`
`Levac
`
`US6,034,970
`
`Wewalaarachchi US 6,067,477
`
`issued Mar. 7, 2000
`(filed July 2, 1997)
`issued May 23, 2000
`(filed Jan. 15, 1998)
`
`Ex. 1206
`
`Ex. 1203
`
`HONEYWELL ENGINEERING MANUAL OF AUTOMATIC CONTROL FOR
`COMMERCIAL BUILDINGS, Honeywell, Inc. (©1997) (Ex. 1204,
`“Honeywell”).
`
`
`
`IPR2016-00155
`Patent 6,147,601
`
`D. References Relied Upon (cont.)
`
`BACnet®: A Data Communication Protocolfor Building Automation and
`Control Networks, ANSI/ASHRAE'! Standard 135-1995 (including
`ANSI/ASHRAE Addendum 135a-1999), American Society of Heating,
`Refrigerating and Air-Conditioning Engineers, Inc. (©1995) (Ex. 1205,
`“BACnet”).
`
`E. Asserted Grounds of Unpatentability
`
`Alarm.com challenges claims 1-3, 22—24, 26, 30, 32, 42, and 43 of
`
`the ’601 patent based on the asserted groundsof unpatentability (“grounds”)
`
`set forth in the table below. Pet. 4, 11-56.
`
`
`
`
`Wewalaarachchi, Honeywell, and|§ 103(a)|1-3, 22—24, 26, 30, 32,
`BACnet
`42, and 43
`
`Wewalaarachchi, Honeywell, § 103(a)|1-3, 22-24, 26, 30, 32,
`BACnet, and Levac
`:
`42, aud 43
`
`
`
`
`
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278-79 (Fed. Cir. 2015),
`
`cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
`
`(mem.) (2016). Under the broadest reasonable interpretation standard, and
`
`absent any special definitions, claim terms or phrases are given their
`
`1 ANSIis an acronym for the American National StandardsInstitute, and
`ASHRAE is an acronym for the American Society of Heating, Refrigerating
`and Air-Conditioning Engineers.
`,
`
`
`
`IPR2016-00155
`Patent 6,147,601
`ordinary and customary meaning, as would be understood by one ofordinary
`skill in the art, in the context of the entire disclosure. In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`In its Petition, Alarm.com proposesa construction for the following
`
`three claim phrases: (1) “message profile containing outgoing message
`
`routing instructions” (claims 1-3, 22—24, 26, 30, and 32); (2) “message
`
`generating mechanism”(claims 22—24, 26, 30, and 32); and
`
`(3) “normalization module” (claims 24 and 32). Pet. 7-11. In response,
`
`Vivint proposes a construction for the claim phrases “messageprofile”
`
`(claims 1-3, 22-24, 26, 30, and 32) and “plurality of message profiles”
`
`(claims 42 and 43), as well as alternative constructions for the claim phrases
`
`“message generating mechanism”and “normalization module.” Prelim.
`
`Resp. 17-28. We, however, need not assess the parties’ proposed
`
`constructions because they are not necessary to resolve the dispositive issues
`
`discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only those claim terms
`
`or phrases that are in controversy need to be construed, and only to the
`
`extent necessary to resolve the controversy).
`
`B. Whether Honeywell and BACnet Qualify as Printed Publications
`Within the Meaning of35 U.S.C. § 102
`Eachof the grounds of unpatentability asserted by Alarm.com inits
`
`Petition is based, in part, on Honeywell and BACnet. Webegin our analysis
`
`by addressing whether Alarm.com has madea threshold showing that these
`
`referencesare printed publications within the meaning of 35 U.S.C. § 102
`
`and, therefore, are available as prior art in an inter partes review ofthe ’601
`
`patent. See 35 U.S.C. § 311(b).
`
`
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`IPR2016-00155
`Patent 6,147,601
`
`1. Honeywell
`
`In its Petition, Alarm.com contends that Honeywellis available as
`
`prior art to the ’601 patent under §§ 102(a) and 102(b) becauseit has a
`
`copyright date of 1997 and bears Library of Congress Catalog Card Number
`
`(“LCCCN”) 97-72971. Pet. 3. Alarm.com’s declarant, Arthur Zatarain, PE,
`
`merely reiterates the same argument advancedin the Petition. Compare
`
`Ex. 1207 { 22, with Pet.3.
`
`In response, Vivint contends that Alarm.com fails to provide
`
`sufficient evidence showing that Honeywell qualifies as prior art to the °601
`
`patent. Prelim. Resp. 2-3. Vivint argues that the copyright date of 1997 on
`
`the second page of Honeywell, byitself, is insufficient to show that
`
`Honeywell was madepublicly accessible in 1997, or at any pointprior to
`
`January 9, 1999—theearliest effective filing date of the ’601 patent. Jd. at
`
`4. In addition, Vivint contends that Alarm.com provides no explanation as
`
`to the meaning of the LCCCN onthe second page of Honeywell, thereby
`
`leaving us to speculate as to what the LCCCNactually signifies. Prelim.
`
`Resp. 4-5. Vivint further argues that, even if we were to assumethat the
`
`LCCCNshowsthat Honeywell was cataloged and indexed sometime in
`
`1997, such a showingstill would be insufficient to prove Honeywell was
`
`made publicly accessible prior to January 9, 1999. Jd. at 5. To support this
`
`argument, Vivint asserts that Alarm.com docsnot provide evidence or
`
`argumentregarding the cataloging and indexing processes of the Library of
`
`Congressin or around 1997. Jd. at 5 (citing In re Cronyn, 890 F.2d 1158,
`
`1161 (Fed. Cir. 1989)).
`
`Welookto the underlying facts to make a legal determination as to
`
`whethera reference is a printed publication. Suffolk Techs., LLC v. AOL
`
`10
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`
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`IPR2016-00155
`Patent 6,147,601
`
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`
`given reference qualifies as a prior art “printed publication” involves a case-
`
`by-case inquiry into the facts and circumstances surroundingits disclosure to
`
`membersof the public. Jn re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`
`2004). The key inquiry is whether the reference was made“sufficiently
`
`accessible to the public interested in the art” before thecritical date.
`
`Cronyn, 890 F.2d at 1160; In re Wyer, 655 F.2d 221, 226 (CCPA 1981).
`
`“A given reference is ‘publicly accessible’ upona satisfactory showingthat
`
`such document has been disseminated or otherwise made available to the
`
`extent that persons interested and ordinarily skilled in the subject matter or
`art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet
`
`Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer
`
`v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).
`
`Onthis record, we are not persuaded that Alarm.com has made a
`
`threshold showing that Honeywellis a printed publication within the
`
`meaningof § 102 and, therefore, qualifies as prior art to the 601 patent. As
`
`discussed above, the second page of Honeywell includes the following two
`
`indicia: (1) a copyright date of 1997 accompanied byan “[alJll rights
`
`reserved”notice; and (2) LCCCN 97-72971. Ex. 1204, 27; Ex. 1207 § 22.
`
`With respect to the copyright date of 1997, we agree with Vivint’s argument
`
`that this copyright date, by itself, is insufficient to demonstrate the date
`
`Honeywell was made publicly accessible. Prelim. Resp. 4. This copyright
`
`date simply informs readers of the underlying claim to copyright ownership
`
`2 All references to the page numbers in Honeywell refer to the page numbers
`inserted by Alarm.com in the bottom, right-hand corner of each page in
`Exhibit 1204.
`
`11
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`
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`IPR2016-00155
`Patent 6,147,601
`
`in Honeywell, and the “[a]ll rights reserved” notice informs readers that the
`
`copyright holder doesnot intend to give up any of the exclusiverights it has
`
`under copyright law. Without more compelling argumentor evidence, this
`
`copyright date does not demonstrate that Honeywell was madesufficiently
`
`accessible to the public interested in the art at any time in 1997.
`
`With respect to the LCCCN,wealso agree with Vivint that, even
`
`when the LCCCNis considered together with the copyright date of 1997, it
`
`does not demonstrate that Honeywell was madesufficiently accessible to the
`
`public interested in the art at any time in 1997. Prelim. Resp. 4-7. As
`
`Vivint correctly points out in its Preliminary Response(id. at 5), it is
`
`incumbent upon Alarm.com to explain how Honeywell wascataloged or
`
`indexed in a meaningful way, such that it could be located by the public
`
`interested in the art by exercising reasonable diligence. See Cronyn, 890
`
`F.2d at 1161 (concluding that documents are not accessible to the public if
`
`“they had not been either cataloged or indexed in a meaningful way”). Here,
`
`although the LCCCN suggests that Honeywell wascataloged at the Library
`
`of Congress, neither Alarm.com norits declarant, Mr. Zatarain, explain
`
`adequately how this mannerof cataloging wassufficient to make Honeywell
`
`reasonably accessible to the public interested in the art. See Square, Inc.v.
`
`Unwired Planet, LLC, Case CBM2014-00156, slip op. at 18 (PTAB Dec. 24,
`
`2014) (Paper 11) (“Petitioner provides no evidence about what an
`
`[International Standard Book Number] actually is, how it is generated, or
`
`whatit purports to show, which would allow usto assign any weighttoit.”’).
`
`Absent argumentor evidence directed to the mannerin which Honeywell
`
`wascataloged at the Library of Congress, we are not persuadedthat as of
`
`12
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`IPR2016-00155
`Patent 6,147,601
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`January 9, 1999, Honeywell was madesufficiently accessible to render it a
`
`printed publication within the meaning of § 102.
`
`2. BACnet
`
`In its Petition, Alarm.com contends that BACnetis available as prior
`
`art to the 601 patent under §§ 102(a) and 102(b) because it was approvedin,
`
`and has a copyright date of, 1995. Pet. 3. Once again, Alarm.com’s
`
`declarant, Mr. Zatarain, merely reiterates the same argument advancedin the
`
`Petition. Compare Ex. 1207 ¥ 22, with Pet.3.
`
`In response, Vivint contends that Alarm.com fails to provide
`
`sufficient evidence showing that BACnetqualifies as prior to the ’601
`
`patent. Prelim. Resp. 7. Vivint argues that the copyright date of 1995 on the
`
`face of BACnet, byitself, is insufficient to show that BACnet was made
`
`publicly accessible in 1995, or at any point prior to January 9, 1999. Jd.
`
`In
`
`addition, Vivint contends that BACnet includes both a 1999 addendum that
`
`wasapproved by the ASHRAE Standards Committee and copyrighted in
`
`2000, and an “Errata” dated September 7, 1999, both of which identify dates
`
`and detailed changes to BACnet that occurred later than January 9, 1999.
`
`Id. at 7-8 (citing Ex. 1205, 537-47, 549-6143). Based on the dates and
`
`detailed changes identified in the addendum andErrata, Vivint asserts that
`
`the actual version of BACnet submitted in this proceeding could not have
`
`been made publicly accessible in 1995, muchless at any timeprior to
`
`January 9, 1999. Id. at 8.
`
`3 All references to the page numbers in BACnetrefer to the page numbers
`inserted by Alarm.com in the bottom,right-hand corner of each page in
`Exhibit 1205.
`
`13
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`IPR2016-00155
`Patent 6,147,601
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`On this record, we are not persuaded that Alarm.com has made a
`
`threshold showing that BACnetis a printed publication within the meaning
`
`of § 102 and, therefore, qualifies as prior art to the 601 patent. Similar to
`
`our analysis above with respect to Honeywell, we agree with Vivint’s
`
`argument that BACnet’s copyright date of 1995, by itself, is insufficient to
`
`demonstrate the date BACnet was made publicly accessible. Prelim. Resp.
`
`7. This copyright date simply informs readers of the underlying claim to
`
`copyright ownership in BACnet, and the “[al]l] rights reserved” notice
`
`accompanyingthis copyright date informs readers that the copyright holder
`
`does notintend to give up any of the exclusive rights it has under copyright
`
`law. Without more compelling argumentor evidence, this copyright date
`
`does not demonstrate that BACnet was madesufficiently accessible to the
`
`public interested in the art at any time in 1995.
`
`As mentionedabove,thereis at least one additional consideration that
`
`weighs in favor of determining that Alarm.com has not madea threshold
`
`showing that BACnet qualifies as prior art to the °601 patent. BACnet
`
`references a 1999 addendum that was approved by the ASHRAE Standards
`
`Committee and copyrighted in 2000. Ex. 1205, 1, 549. According to
`
`BACnet, “[t]he purpose of this addendum is to add a numberof independent
`
`substantive changes to the BACnet standard.” /d. at 551. BACnet then
`
`proceeds to summarize these substantive changes. Jd. at 551-52.
`
`In its Petition, Alarm.com does not acknowledge the aforementioned
`
`substantive changes made by the addendum to BACnetin 1999, nor does
`
`Alarm.com address whetherit relies upon these substantive changesto
`
`formulate its asserted grounds based on obviousness. We,therefore, are left
`
`to examine each asserted ground based on obviousnessto unearth whether
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`14
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`IPR2016-00155
`Patent 6,147,601
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`Alarm.com relies upon these substantive changes to support its analysis. See
`
`DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (Fed. Cir. 1999) (“A brief
`
`must make all arguments accessible to the judges, rather than ask them to
`
`play archeologist with the record.”). This we will not do. Section 314(a) of
`
`Title 35 of the United States Code imposes a burden on Alarm.com—notthe
`
`Board—toestablish in its Petition a reasonable likelihood of success, which
`
`includes, among other things, making a threshold showing that the subject
`
`matter of BACnetrelied upon in the Petition indeed was made publicly
`
`accessible before January 9, 1999. Alarm.com doesnotsatisfy this burden
`
`becauseit does not attempt to delineate whether the subject matter of
`
`BACnetrelied uponin its Petition is entitled to a 1995 or 1999 priority date.
`
`In any event, to the extent Alarm.com relies upon the substantive
`
`changes made to BACnetin 1999 to formulate its asserted grounds based on
`
`obviousness, there is insufficient argument or evidencein this record to
`
`support a determination that these changes were made publicly accessible in
`
`the mere eight days of 1999 prior to January 9. Consequently, we are not
`
`persuadedthat as of January 9, 1999, the subject matter of BACnetrelied
`
`upon by Alarm.com in its Petition was madesufficiently accessible to the
`
`public interested in the art and, therefore, qualifies as prior art to the °601
`
`patent.
`
`C. Obviousness Grounds Based, In-Part, on Honeywell and BACnet
`
`As we explained previously, each of the grounds asserted by
`
`Alarm.com in its Petition is based, in part, on Honeywell and BACnet.
`
`Alarm.com has not demonstrated sufficiently that Honeywell and BACnet
`
`are available as priorart to the ’601 patent under §§ 102(a) and 102(b).
`
`Consequently, Alarm.com has not demonstrated a reasonable likelihood that
`
`15
`
`
`
`IPR2016-00155
`Patent 6,147,601
`it would prevail in its assertions that (1) claims 1-3, 22-24, 26, 30, 32, 42,
`and 43 would have been obvious over the combination of Wewalaarachchi,
`
`Honeywell, and BACnet; and (2) these same claims would have been
`
`obvious over the combination of Wewalaarachchi, Honeywell, BACnet, and
`
`Levac.
`
`D. Other Considerations
`
`Alarm.com filed a Brief limited to addressing certain aspects of
`
`Vivint’s Request for Certificate of Correction for the ’601 patent, which was
`
`filed on December17, 2015 (‘the ’601 Request”). Pet. Brief 1-2.
`
`Inits
`
`Brief, Alarm.com represents that the °601 Request only seeksto correct the
`
`claim language of dependent claim 39. Jd. at 1. The current situation does
`
`not require us to assess the possible impact of this proposed correction on
`
`the arguments and evidence advanced by Alarm.com inits Petition because
`
`dependentclaim 39 is not challenged. We will reassess the stay imposed on
`
`the °601 Request following consideration of Alarm.com’s request for an
`
`inter partes review ofclaims 1, 2, 4-23, 25-31, and 33-41 of the ’601 patent
`
`in Case IPR2016-00116.
`
`Ill. CONCLUSION
`
`Taking into account the arguments presented in Vivint’s Preliminary
`
`Response, we conclude that the information presented in the Petition does
`
`not establish that there is a reasonable likelihood that Alarm.com would
`
`prevail in challenging any of claims 1-3, 22-24, 26, 30, 32, 42, and 43 of the
`
`°601 patent as unpatentable under § 103(a).
`
`16
`
`
`
`IPR2016-00155
`Patent 6,147,601
`
`IV. ORDER
`
`In consideration of the foregoing, it is ORDEREDthatthe Petitionis
`
`DENIED,and notrial is instituted.
`
`17
`
`
`
`IPR2016-00155
`Patent 6,147,601
`
`For PETITIONER:
`
`William H. Mandir
`Brian K. Shelton
`Sughrue Mion PLLC
`wmandir@sughrue.com
`bshelton@sughrue.com
`
`Roger G. Brooks
`Teena-Ann V. Sankoorikal
`Cravath, Swaine & Moore LLP
`rgbrooks@cravath.com
`tsankoor@cravath.com
`
`For PATENT OWNER:
`
`Robert Greene Stcrnc
`Jason D. Eisenberg
`Ryan C. Richardson
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`rsterne-PTAB@skegf.com
`jasone-PTABW@skegf.com
`rrichardson-PTAB@skef.com
`
`18
`
`
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