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Alarm.com Incorporated v. Vivint, Inc.

Docket IPR2015-02004, Patent Trial and Appeal Board (Sept. 30, 2015)
Charles Boudreau, James Arpin, Michael Zecher, presiding
Case TypeInter Partes Review
Patent6147601
Petitioner Alarm.com Incorporated
Patent Owner Vivint, Inc.
Assignee WILMINGTON TRUST, NATIONAL ASSOCIATION
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17 Notice: Order Conduct of Proceeding

Document IPR2015-02004, No. 17 Notice - Order Conduct of Proceeding (P.T.A.B. Jun. 1, 2016)
On January 28, 2016, we issued a set of Orders staying certain Requests for Certificates of Correction filed by Patent Owner with respect to
IPR2016-00155, IPR2016-00161, and IPR2016-00173 (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1) U.S. Patent Nos. 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1, pending our decisions on institution in each of the above-identified cases.2 In a telephone conference held on May 25, 2016, we notified the parties3 of our intention to lift the stay of the Requests for Certificates of Correction, in view of the fact that decisions on institution have now been entered in each identified case.4 In the telephone conference, Petitioner initially objected to our lifting of the stay, citing its intention to request partial rehearing of our Decision on each case.
3 Petitioner was represented in the telephone conference by William Mandir, Brian Shelton, and Teena-Ann Sankoorikal; and Patent Owner was represented by Robert Sterne, Jason Eisenberg, and Joseph Mutschelknaus.
IPR2016-00155, IPR2016-00161, and IPR2016-00173 (Patents 6,147,601, 6,462,654 B1, 6,535,123 B2, and 6,717,513 B1) Institution that only granted review based on a subset of the challenged claims in Case IPR2016-00161, as well as its intention to file additional petitions for inter partes review of certain claims subject to Patent Owner’s Requests for Certificates of Correction.
Petitioner also repeated its previous position that certain changes sought in Patent Owner’s Requests for Certificates of Correction are not properly characterized as “corrections” within the meaning of 35 U.S.C. § 255.5 Patent Owner indicated that it does not oppose lifting of the stay of its Requests for Certificates of Correction.
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16 Notice: Notice of Refund

Document IPR2015-02004, No. 16 Notice - Notice of Refund (P.T.A.B. May. 9, 2016)
Petitioner’s request for a refund of certain post-institution fees paid on 09/30/2015 in the above proceeding is hereby granted.
The amount of $14,000 has been refunded to the Petitioner’s deposit account.
Case IPR2015-02004 Patent 6,147,601 The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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14 Decision Denying Institution: Decision Denying Institution

Document IPR2015-02004, No. 14 Decision Denying Institution - Decision Denying Institution (P.T.A.B. Mar. 31, 2016)
Nonetheless, by virtue of their dependency, each of those claims includes all of the limitations of claim 1.
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13 Order: Order Granting Petitioners Motions for Admission Pro Hac Vice

Document IPR2015-02004, No. 13 Order - Order Granting Petitioners Motions for Admission Pro Hac Vice (P.T.A.B. Mar. 11, 2016)
Granting Petitioner’s Motions for Admission Pro Hac Vice of Roger G. Brooks and Teena-Ann V. Sankoorikal
Petitioner, Alarm.com Incorporated (“Petitioner”), moves for pro hac vice admission of Mr. Roger G. Brooks and Ms. Teena-Ann V. Sankoorikal.
Petitioner provides Affidavits from Mr. Brooks and Ms. Sankoorikal in support of its Motions.2 Id. Patent Owner, Vivint, Inc., has not opposed Mr. Brooks’s or Ms. Sankoorikal’s admission pro hac vice in these cases.
Mr. Brooks and Ms. Sankoorikal are permitted to appear pro hac vice in these cases as back-up counsel only.
In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motions for pro hac vice admission of Mr. Roger G. Brooks and Ms. Teena-Ann V. Sankoorikal are granted, and Mr. Brooks and Ms. Sankoorikal are authorized to represent Petitioner as back-up counsel in these cases; FURTHER ORDERED that Petitioner shall continue to have a registered practitioner as lead counsel in each case; FURTHER ORDERED that Mr. Brooks and Ms. Sankoorikal shall comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42, of the Code of Federal Regulations; and FURTHER ORDERED that Mr. Brooks and Ms. Sankoorikal are subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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10 Notice: Order Conduct of Proceeding

Document IPR2015-02004, No. 10 Notice - Order Conduct of Proceeding (P.T.A.B. Jan. 28, 2016)
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6 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response

Document IPR2015-02004, No. 6 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response (P.T.A.B. Oct. 8, 2015)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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12 Reply: Petitioners Reply Brief re POs Request for Certificate of Correction

Document IPR2015-02004, No. 12 Reply - Petitioners Reply Brief re POs Request for Certificate of Correction (P.T.A.B. Feb. 3, 2016)
... claim 38, wherein said outgoing exception message comprises exception information and identification information concerning said piece of remote equipment to which said normal status which a normal Dependent Claims Affected none ...
Although Petitioner believes claim 39 to be of indefinite scope and that Vivint’s proposed change does not constitute a correction, the Petition nonetheless identified where in the cited prior art disclosed a normal status message ...
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