From:
`To:
`Cc:
`Subject:
`Date:
`
`Wayne M. Helge
`Trials
`Oliver, Justin J.; James Wilson; Caixeiro, Manny J.; ecobee-IPRs; Ethan Song
`IPR2022-01339 ecobee Technologies ULC v Causam: Status Report
`Tuesday, December 6, 2022 12:22:16 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`To the Board:
`
`The following email is being sent as a joint status report pursuant to the Board’s instructions during
`the conference on November 17, 2022. Since that conference on November 17, 2022, the parties
`have met and conferred by telephone, and reached the following agreement regarding Patent
`Owner’s requested discovery:
`
`·
`
`·
`
`·
`
`·
`
`·
`
`Petitioner ecobee will produce on December 6, 2022 the complete ecobee-Alarm.com
`Integration Agreement under the parties’ stipulated protective order.
`
`The parties’ stipulated protective order is a slightly modified version of the Board’s Default
`Protective Order, in which the access for materials designated by a producing party as
`“Attorneys’ Eyes Only” is limited to those persons identified in paragraphs 2(B) and (2(D)-(F)
`(i.e., eliminating “Parties” and “Experts”).
`
`If the ecobee-Alarm.com integration agreement is to be filed by Patent Owner Causum in
`this IPR, it will be designated in P-TACTS as viewable by the Parties and Board Only, and it
`will be accompanied by a motion to seal (and the stipulated protective order). Petitioner
`ecobee will be afforded the opportunity to provide input to the motion to seal in advance of
`filing.
`
`ecobee will conduct a reasonable search involving ecobee’s internal legal department and
`outside ecobee legal counsel (including IPR and litigation counsel) involved in the patent
`disputes related to Causum’s U.S. Patent No. 10,394,268 (“the ’268 patent”), in the period
`starting on June 22, 2022, through the filing of IPR2022-01339 against the ’268 patent, and
`either (A) confirm that: (1) ecobee and its counsel did not discuss the decision making for or
`drafting of ecobee’s IPR against the ’268 patent with Alarm.com or it subsidiaries, (2)
`Alarm.com (including its subsidiaries) did not review, provide any feedback, or play any role
`in the preparation of drafts of the IPR petition, or (B) produce the responsive, non-
`privileged results of its search (to the extent that any privilege is asserted, ecobee will meet
`and confer on that assertion).
`
`ecobee will not produce documents relating to EnergyHub (however, ecobee will not omit
`from the search identified above any responsive, non-privileged results that relate to
`EnergyHub).
`
`·
`
`Causum reserves any rights with respect to documents that may be referenced in the
`
`Exhibit 3002
`
`

`

`ecobee-Alarm.com Integration Agreement, should such reference(s) or documents exist.
`
`The parties thank the Board for offering to make itself available this week, should further guidance
`and rulings be necessary. However, the parties currently believe they have reached full agreement
`and do not anticipate needing further Board assistance on this issue.
`
`Sincerely,
`
`/s/wayne m. helge
`Wayne M. Helge
`Counsel for Patent Owner
`
`/s/ (by permission)
`Justin J. Oliver
`Counsel for Petitioner
`
`
`Wayne M. Helge, Esq.
`Registered Patent Attorney
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Email: whelge@davidsonberquist.com
`Tel: 571-765-7708
`www.davidsonberquist.com
`
`
` Davidson, Berquist, Jackson & Gowdey LLP
`
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`