From:
`To:
`Cc:
`Subject:
`Date:
`
`Wayne M. Helge
`Director_PTABDecision_Review
`Oliver, Justin J.; James T. Wilson; CNTaylor@venable.com
`2024-03-22 IPR2022-01339 Request for Director Review of Panel"s FWD
`Friday, March 22, 2024 4:20:40 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Honorable Director,
`
`Patent Owner respectfully requests Director Review of the Final Written Decision issued on March 5,
`2024 in IPR2023-01339, pursuant to the Revised Interim Director Review Process
`(https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-process).
`
`Patent Owner is concurrently filing its Request for Rehearing by the Director via P-TACTS, on this
`date, March 22, 2024.
`
`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner requests Director Review of the Final Written
`Decision’s finding that the Petition is not time-barred under 35 U.S.C. § 315(b) despite the service of
`a complaint against third-party Alarm.com more than one year prior to the Petition’s filing, and
`Patent Owner’s introduction of evidence sufficient to establish that Alarm.com is an unnamed real-
`party-in-interest (“RPI”) and privy to the Petition and Petitioner, respectively.
`
`Patent Owner respectfully submits that the Panel reached erroneous findings of material fact:
`1. that ecobee’s indemnification obligation to Alarm.com was not triggered by patent owner’s
`prior complaint against Alarm.com, alleging infringement of the patent-in-suit;
`2. that the complaint against Alarm.com does not accuse Alarm.com of infringement for its
`integration of ecobee thermostats into Alarm.com smart home systems despite broad
`allegations in the complaint to the contrary; and
`3. that ecobee and Alarm.com are competitors and entered into only a “routine” agreement,
`despite publicly holding themselves out as partners in smart home technology.
`
`Patent Owner also respectfully submits that the Panel reached an erroneous conclusion of law—that
`Alarm.com was neither a privy nor RPI—by shifting the burden of proof from Petitioner to Patent
`Owner on the privy/RPI dispute.
`
`This request for Director Review also presents the following important question of law or policy:
`When a patent owner produces sufficient evidence to raise a dispute that an unnamed third party
`should have been named as a real party in interest or privy, what evidence must a petitioner
`introduce into the record to carry its burden to show that the unnamed party is not a real party in
`interest or privy.
`
`Respectfully submitted,
`
`IPR2022-01339
`Ex. 3100
`
`

`

`/Wayne M. Helge/
`
`Wayne M. Helge
`Registered Patent Attorney
`NOSSAMAN LLP
`1401 New York Avenue NW, Suite 800
`Washington, DC 20005
`whelge@nossaman.com
`Admitted only in the District of Columbia, Virginia, and the U.S. Patent and Trademark Office
`T 202.887.1400 F 202.466.3215
`D 202.887.1418
`
`
`
`