Alarm.com Wins Appeal Affirming PTAB Decision Invalidating Patent Claims

On April 13, 2021, the United States Court of Appeals for the Federal Circuit affirmed two inter partes review (“IPR”) decisions on remand by the Patent Trial and Appeal Board (“PTAB”) in favor of Cravath client Alarm.com Incorporated (“Alarm.com”), invalidating additional claims of two patents at issue in litigation brought by Vivint, Inc.

Alarm.com petitioned for IPR review after Vivint sued Alarm.com in 2015 alleging that Alarm.com’s interactive security and home automation technology infringed six of Vivint’s patents relating to remote monitoring, control of equipment and home‑located electronic devices, and location‑based alerting systems. In final decisions issued in 2017, the PTAB concluded that the majority of the claims it reviewed were invalid on the basis of 35 U.S.C. § 102 (anticipation) and 35 U.S.C. § 103 (obviousness). On initial appeal of the PTAB rulings, the Federal Circuit agreed with Alarm.com that the PTAB had erred in its construction of one claim term at issue in two of the patents and remanded the cases to the PTAB for further consideration. On remand, the PTAB issued decisions in 2019 finding fifteen additional claims of the two patents at issue invalid for obviousness. Vivint appealed these decisions, arguing that the PTAB judges who issued the decisions were appointed in violation of the U.S. Constitution’s Appointments Clause. The Federal Circuit held that Vivint had forfeited its constitutional challenge by not raising it in its initial appeals.

The Cravath team was led by partner Richard J. Stark and included practice area attorneys Marc J. Khadpe and Matthew J. Boggess and associates Emma K. Kolesar, Jill E. Greenfield and Jonathan D. Stahl.

The case is Vivint, Inc. v. Alarm.com Inc., Case No. 19‑2438 (Fed. Cir.).