Paper No. 38
`Trials@uspto.gov
`571-272-7822
`
`Entered: October 26, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`
`
`
`Case IPR2015-01965 (Patent 7,884,713 B1)
` Case IPR2015-01977 (Patent 6,924,727 B2)1
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Argument
`35 U.S.C. 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`1 This Order addresses an issue that is identical in both cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`

`
`IPR2015-01965 (Patent 7,884,713 B1)
`IPR2015-01977 (Patent 6,924,727 B2)
`
`
`
`
`On March 30, 2016, we instituted an inter partes review as to claims 1–54 of
`U.S. Patent No. 7,884,713 B1. Case IPR2015-01965, Paper 12. On March 24,
`2016, we instituted an inter partes review as to claims 1–9, 14–18, and 22–38 of
`U.S. Patent No. 6,924,727 B2. Case IPR2015-01977, Paper 13. We issued a
`Scheduling Order in both proceedings that included the same DUE DATES. Case
`IPR2015-01965, Paper 13; Case IPR2015-01977, Paper 14. Both parties requested
`oral argument for these proceedings pursuant to 37 C.F.R. § 42.70(a). Case
`IPR2015-01965, Papers 30, 31; Case IPR2015-01977, Papers 34, 36. The parties’
`requests are granted-in-part.
`Petitioner, Alarm.com Incorporated (“Alarm.com”), requests twenty-five
`(25) minutes, in total, to present arguments in Case IPR2015-01965 (Paper 30),
`and requests seven-five (75) minutes, in total, to present arguments in Case
`IPR2015-01977 (Paper 34). Patent Owner, Vivint, Incorporated (“Vivint”),
`requests thirty (30) minutes, in total, to present arguments in Case IPR2015-01965
`(Paper 31), and requests seventy-five (75) minutes, in total, to present arguments in
`Case IPR2015-01977 (Paper 36). We have reviewed the issues that the parties
`intend to address for each proceeding, but because these proceedings are being
`heard together in one consolidated hearing, two hours of oral argument time, in
`total, should be more than sufficient. Accordingly, each party will have one (1)
`hour of total time to present its arguments in both proceedings.
`Alarm.com bears the ultimate burden of proof that the challenged claims are
`unpatentable based on the grounds of unpatentability (“grounds”) instituted in
`these proceedings. 35 U.S.C. § 316(e). Alarm.com, therefore, will proceed first to
`present its case as to the challenged claims and the grounds instituted in Case
`IPR2015-01965. Alarm.com may reserve rebuttal time. Thereafter, Vivint will
`respond to Alarm.com’s case. Alarm.com then will make use of its rebuttal time to
`
`
`
`2
`
`

`
`
`
`IPR2015-01965 (Patent 7,884,713 B1)
`IPR2015-01977 (Patent 6,924,727 B2)
`
`
`respond to Vivint’s case. After completion of all the parties’ arguments in Case
`IPR2015-01965, the parties then will proceed to follow this same procedure for
`Case IPR2015-01977.
`
`The hearing will commence at 1:00 PM Eastern Time on Wednesday,
`November 30, 2016, and it will be open to the public for in-person attendance on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia
`(Hearing Room A). In-person attendance will be accommodated on a first-come
`first-serve basis. We will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no
`later than seven (7) business days before the hearing date. They shall be filed with
`the Board no later than the time of the hearing. Demonstrative exhibits are not
`evidence, but merely a visual aid at the hearing. Demonstrative exhibits shall not
`introduce new arguments or evidence. The parties must initiate a conference call
`with us at least two (2) business days prior to the hearing date to resolve any
`dispute over the propriety of each party’s demonstrative exhibits. For further
`guidance on what constitutes an appropriate demonstrative exhibit, the parties are
`directed to CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case
`IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118).
`We expect lead counsel for each party to be present at the hearing; however,
`any backup counsel may make the actual presentation, in whole or in part. See
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14, 2012).
`If lead counsel for either party is unable to attend the hearing, the parties shall
`request a joint telephone conference call no later than two (2) business days prior
`to the hearing date to discuss the matter.
`
`
`
`3
`
`

`
`IPR2015-01965 (Patent 7,884,713 B1)
`IPR2015-01977 (Patent 6,924,727 B2)
`
`
`
`
`
`We take this opportunity to remind the parties that each presenter must
`identify clearly and specifically each demonstrative exhibit, e.g., by slide or screen
`number, referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that two members of the panel
`will be attending the hearing electronically from remote locations. If the parties
`have questions as to whether demonstrative exhibits would be sufficiently visible
`and available to each of the Administrative Patent Judges presiding over the
`hearing, the parties are invited to contact the Board at 571-272-9797.
`Requests for audio-visual equipment are to be made at least five (5) business
`days in advance of the hearing date. Such requests must be sent
`to Trials@uspto.gov. If the requests are not received timely, equipment may not
`be available on the day of the hearing.
`
`
`
`4
`
`

`
`
`
`
`
`IPR2015-01965 (Patent 7,884,713 B1)
`IPR2015-01977 (Patent 6,924,727 B2)
`
`For PETITIONER:
`William H. Mandir
`Brian K. Shelton
`Sughrue Mion PLLC
`wmandir@sughrue.com
`bshelton@sughrue.com
`
`Roger Brooks
`Teena-Ann V. Sankoorikal
`Marc J. Khadpe
`Cravath, Swaine & Moore LLP
`rgbrooks@cravath.com
`tsankoor@cravath.com
`mkhadpe@cravath.com
`
`
`
`
`
`For PATENT OWNER:
`
`Robert Greene Sterne
`Jason D. Eisenberg
`Lestin L. Kenton, Jr.
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`rsterne@skgf.com
`jasone-PTAB@skgf.com
`lkenton-PTAB@skgf.com
`
`
`
`5