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Site Lawyers Inc. Wins Appeal Affirming Inter Partes Review Decisions

On December 20, 2018, the United States Court of Appeals for the Federal Circuit affirmed three inter partes review (“IPR”) decisions by the Patent Trial and Appeal Board (“PTAB”) in favor of Cravath client Inc., invalidating claims in three patents at issue in infringement litigation brought by Vivint, Inc. petitioned for IPR review after Vivint sued in 2015 alleging that’s interactive security and home automation technology infringed six of Vivint’s patents relating to remote monitoring and control of equipment. After oral arguments held in 2016, the PTAB ruled in favor of, invalidating all 85 challenged claims in two of Vivint’s patents on the basis of 35 U.S.C. § 102 (anticipation) and 35 U.S.C. § 103 (obviousness). Vivint appealed, and on July 13 and July 26, 2018, the Federal Circuit affirmed all of the PTAB’s findings of unpatentability.

The PTAB also invalidated a total of 31 out of 66 claims across three additional Vivint patents under § 103. Vivint appealed the IPR decisions to the Federal Circuit, and cross‑appealed as to the claims that were not found unpatentable.

In its December 20, 2018 ruling, the Federal Circuit affirmed all 31 of the PTAB’s findings of unpatentability. The court also ruled for on the cross‑appeal, reversing the PTAB’s construction of the term “communication device identification codes”, vacating the PTAB’s related conclusions, and remanding for further consideration.

Cravath partner Richard J. Stark tried the inter partes reviews and argued the appeal before the Federal Circuit. The Cravath team also included practice area attorney Marc Khadpe and associates Michael J. Zaken, Jonathan Mooney and Jill Greenfield. The cases are Inc. v. Vivint, Inc., Nos. 2017‑2218, 2017‑2219, 2017‑2220, 2017‑2260, 2017‑2261, 2017‑2262 (Fed. Cir.); Inc. v. Vivint, Inc., No. IPR2016‑00116; Inc.  v. Vivint, Inc., No. IPR2016‑00161; and Inc. v. Vivint, Inc., No. IPR2016‑00173. The underlying litigation is Vivint, Inc. v. Inc., No. 15‑cv‑0392 (D. Utah).