Trials@uspto.gov
`571-272-7822
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`Paper 35
`Date: April 18, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HM ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`3M INNOVATIVE PROPERTIES COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-00482
`Patent 8,694,040 B2
`____________
`
`Before JAMES P. CALVE, RICHARD E. RICE, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 35
`Date: April 18, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HM ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`3M INNOVATIVE PROPERTIES COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-00482
`Patent 8,694,040 B2
`____________
`
`Before JAMES P. CALVE, RICHARD E. RICE, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2015-00482
`Patent 8,694,040 B2
`
`
`BACKGROUND
`I.
`Petitioner HM Electronics, Inc. (“HME”) filed a Petition (Paper 3,
`“Pet.”) seeking inter partes review of claims 1–32 of U.S. Patent No.
`8,694,040 B2 (Ex. 1001, “the ’040 patent”). Patent Owner 3M Innovative
`Properties Company (“3M”) then filed a Preliminary Response. Paper 11
`(“Prelim. Resp.”). Based on these submissions, we instituted trial as to
`claims 1–32 (all claims) of the ’040 patent. Paper 12 (“Dec. on Inst.”), 18–
`19. After our Institution Decision, 3M filed a Response. Paper 17 (“PO
`Resp.”). HME filed a Reply. Paper 23 (“Pet. Reply”).
`An oral argument was conducted on March 10, 2016. A transcript of
`the argument is entered in the record. Paper 34 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`A. Related Proceedings
`The parties identify the following proceeding as affecting or being
`affected by a decision in this proceeding: 3M Company and 3M Innovative
`Properties Company v. HM Electronics, Inc., No. 14-cv-01000 (D. Minn.).
`Pet. 2; Paper 4, 1–2. The ’040 patent also is the subject of an inter partes
`review in IPR2015-00491.
`
`B. The ’040 Patent (Ex. 1001)
`The ’040 patent discloses a wireless intercom system for commercial
`establishments, particularly quick service restaurants. Ex. 1001, 1:15–17,
`21–37. Intercom system 12 includes base station 14, which communicates
`wirelessly with a plurality of headsets 16a, 16b, 16n worn by personnel or
`staff of establishment 10. Id. at 5:21–25. Figure 1, which is reproduced
`below, illustrates this arrangement.
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`Figure 1 is a block diagram of an intercom system. Headsets 16a,
`16b, 16n can be in full duplex communication with base station 14 with
`separate volume or gain controls available for each headset and direction of
`communication. Id. at 5:38–44. Other adjustable parameters include receive
`and transmit volume, master volume for a main speaker of a drive-through
`facility, individual volume for each channel of the facility, and base station
`receive and transmit volume. Id. at 5:44–52, 6:15–50. A set of parameters
`may form template 22 stored locally or remotely for recall. Id. at 6:51–7:22.
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`To facilitate resolution of technical problems, intercom system 12
`allows personnel at establishment 10 to call a technical service facility 18
`that is located remotely from establishment 10. Id. at 6:12–14. Technical
`service facility 18 can access parameters controlling intercom system 12
`remotely via wide area network 20 and review and adjust the parameters to
`place intercom system 12 back into operation or improve operation without
`sending a service technician to establishment 10. Id. at 6:15–25.
`The ’040 patent claims priority as a continuation of application No.
`11/276,048, filed on February 10, 2006. Ex. 1001, 1:8–10. 3M asserts that
`the ’040 patent thus has a 2006 priority date. PO Resp. 54; Ex. 2003 ¶ 11.
`
`C. Illustrative Claim
`Claims 1 and 18 are independent. Claim 1 is reproduced below.
`1. An
`intercom system, said
`intercom system being
`configurable for a drive-through, quick service restaurant
`establishment having a staff, comprising:
`a base station having the ability to connect to a wide area
`communication network;
`at least one headset configured for two-way wireless
`communication with said base station;
`said wireless communication between the at least one headset
`and said base station being configurable with at least one
`parameter that adjusts a volume level of communications
`wirelessly received or wirelessly transmitted by the
`headset;
`said at least one parameter being locally adjustable at the
`establishment;
`said base station being configured to permit remote review
`and remote adjustment of said at least one parameter from
`a facility remote from the location of the establishment
`when said base station is connected to said wide area
`communication network; and
`wherein said at least one parameter can be saved into a
`template of parameters for later use.
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`D. Prior Art
`HME relies on the following references:
`
`Reference
`HME Pro850
`
`HME Wireless
`6000
`
`3M Wireless
`
`Telex Intercom
`Handbook
`
`Telex
`RadioCom
`
`Printed Publication
`Pro850 Wireless Intercom,
`© HM Electronics, Inc.
`Wireless 6000 Wireless
`Drive-Thru Audio System,
`© HM Electronics, Inc.
`3M Wireless Intercom System
`Service Information, 3M
`Food Services Trade Dep’t.,
`© 3M
`Handbook of Intercom
`Systems Engineering (1st ed.,
`rev. 4, 2002), © 2000 Telex
`Communications, Inc.
`Telex Operating Instructions,
`RadioCom™ BTR-800, TR-
`800 Professional Wireless
`Intercom System, Telex
`Communications, Inc.
`
`Date
`Sept. 2003
`
`Exhibit
`1009
`
`Aug. 2003
`
`1010
`
`Mar. 2003
`
`1011
`
`Mar. 2002
`
`1012
`
`June 2002
`
`1013
`
`E. Asserted Grounds of Unpatentability
`We instituted trial regarding the patentability of claims 1–32 of the
`’040 patent on the following grounds. Dec. on Inst. 18–19.
`
`References
`HME Pro850, Telex Intercom
`Handbook, HME Wireless 6000
`HME Pro850, Telex Intercom
`Handbook, 3M Wireless
`HME Pro850, Telex Intercom
`Handbook, 3M Wireless, Telex
`RadioCom
`
`Basis
`§ 103
`
`Claims Challenged
`1–32
`
`§ 103
`
`§ 103
`
`1–5, 9–21, 25–32
`
`6–8, 22–24
`
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`II. ANALYSIS
`Claim Interpretation
`A.
`In an inter partes review, claims of an unexpired patent are given their
`broadest reasonable construction in light of the specification in which they
`appear. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–1279
`(Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
`interpretation standard in enacting the AIA,” and “the standard was properly
`adopted by PTO regulation”), cert. granted sub nom. Cuozzo Speed Techs.
`LLC v. Lee, 136 S. Ct. 890 (mem.) (2016); 37 C.F.R. § 42.100(b). Claim
`terms are given their ordinary, customary meaning as understood by a
`skilled artisan in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`In instituting trial, we determined that it was not necessary to interpret
`any claim limitations to reach our decision. Dec. on Inst. 5. Based on the
`submissions of the parties and their respective positions, we determine that it
`is necessary to construe the following claim terms.
`1. “remote” (claims 1, 18)
`HME asserts that the broadest reasonable interpretation of “remote” is
`“not in the immediate vicinity, and accessible through a wide area network.”
`Pet. 10; Pet. Reply 3–4. 3M argues that HME’s interpretation of “remote” is
`incorrect because it does not capture the limitations in claims 1 and 18 that
`(1) remote review and remote adjustment occurs from a facility remote from
`the location of the establishment, (2) the base station is configured to permit
`remote review and remote adjustment of said at least one parameter, and
`(3) for remote review and adjustment, the base station is connected to said
`wide area communication network. PO Resp. 11; Ex. 2003 ¶¶ 31–32.
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`We interpret “remote” to mean “not at the site of.” This interpretation
`is consistent with an ordinary meaning of “remote,” which includes “[n]ot in
`the immediate vicinity, as a computer or other device located in another
`place (room, building, or city) and accessible through some type of cable or
`communications link.” See Pet. 9–10 (quoting MICROSOFT COMPUTER
`DICTIONARY (5th ed. 2002) (Ex. 1006 at APP2787)).
`Our interpretation also is consistent with the ’040 patent specification,
`which discloses that the present invention “allow[s] the intercom system of
`an establishment to be remotely adjusted by a technician or other user
`without the need for such technician or other user to be dispatched to the
`establishment itself, saving both a considerable amount of both time and
`money.” Ex. 1001, 2:33–37; 6:15–20. A service technician can access the
`intercom system remotely via a wide area network 20 such as the internet
`“from great distances” (id. at 2:38–41), but the main advantage of the remote
`accessibility is that a technician may resolve an issue with intercom system
`12 quickly, without traveling to the site of establishment 10 (id. at 6:26–38).
`The ’040 patent specification also discloses that a location from which
`remote review and adjustment occurs can be a great distance away from the
`location of the quick service restaurant so a technician would have to fly or
`travel many hours, or even a day, to reach an establishment 10. Id. at 6:26–
`32. The ’040 patent refers to the location of the restaurant establishment 10
`as “remote” from the technician. Id. The ’040 patent specification also
`discloses that the use of the internet permits a technician or other user to
`access the intercom system from “great distances” and review and adjust
`parameters of the intercom system. Id. at 2:38–41; see also Tr. 33:18–35:7
`(“remote” means away from the location of the establishment).
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`In addition to using the term “remote” to refer to locations that are a
`great distance from the site of establishment 10, the ’040 patent specification
`uses the term “remote” to encompass remote adjustments by a service
`technician who does not have to make a site visit, i.e., a technician who is
`located other than at the site of the quick service restaurant establishment 10.
`In this regard, the ’040 patent specification further discloses:
`If the site of establishment 10 is remote, many hours of
`establishment down time may be saved, perhaps even a day if it
`is necessary to fly or otherwise transport a service technician to
`a very remote site. Even if the site of establishment is not remote,
`a service technician may be able to service many more
`establishments and solve many more issues more efficiently by
`making remote adjustments than by incurring site visits. Remote
`adjustment of parameters of intercom system 12 may minimize,
`or eliminate altogether, service interruption by establishment 10.
`Id. at 6:28–38 (emphasis added). “Remote” adjustments can be made from
`any location that is not at the site of the restaurant to reduce down time that
`normally occurs if a technician has to travel to the site of the restaurant. Id.
`Thus, the ’040 patent specification uses “remote” to encompass not
`only a service technician at remote facility 18 that is located a great distance
`from establishment 10, but also any other location that is away from the site
`of establishment 10. For example, the summary of the invention indicates
`that the intercom system can be “remotely adjusted” by a technician or other
`user so the technician or user does not have to travel to the establishment.
`Id. at 2:33–36. Thus, a key consideration in remote adjustment capability is
`the ability to review and adjust intercom system parameters without having
`to visit the site of a quick service restaurant. Remote adjustment thus occurs
`anywhere other than at the site of the quick service restaurant establishment.
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`This interpretation becomes clearer when considered in the overall
`context of the ’040 patent specification disclosure, which discloses that an
`advantage of remote adjustment capability is to reduce the loss of business
`and revenue that may occur from an inoperable intercom system.
`The drive-through ordering system is vitally important for
`a quick service restaurant. In some quick service restaurants, the
`drive-through is sixty percent (60%) or more of the revenue of
`the establishment. Thus, there is a great need for a reliable
`intercom system for use, for example, in obtaining orders from
`the drive-through facility. If the intercom system develops a
`fault, becomes mal-adjusted or otherwise mal-functions, the
`establishment may be unable to process orders from the drive-
`through facility not only preventing the establishment from
`booking the revenue which otherwise would have been obtained
`but also potentially alienating customers.
`Id. at 1:54–64.
`The remote adjustment capability of the intercom system reduces the
`amount of time an intercom system is inoperable by allowing a technician
`who is “remote” from establishment 10 to adjust the system. This benefit
`accrues whether the technician is “remote” by a great distance or “remote” at
`a closer location that still is not at the site of the quick service restaurant. A
`site visit is required in both scenarios to restore the intercom system, and
`down time occurs until a technician visits the site and fixes the intercom.
`For a technician located a significant distance geographically from the
`location of a quick service restaurant, remote adjustment saves “considerable
`amount of time for such service technician, once summoned, to arrive at the
`location of establishment 10 in order to begin repairs.” Id. at 6:1–5. Remote
`adjustment saves many hours of down time at establishment 10, even a day
`if it is necessary to fly a technician to a very remote site. Id. at 6:26–32.
`
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`The ’040 patent specification discloses that similar advantages accrue
`for a service technician who is not located a great distance “remote” from a
`quick service restaurant establishment 10, but still is not on-site. Thus,
`Even if establishment 10 is not located a significant distance
`from a qualified service technician, sending a service technician
`on-site to perform a repair can still be a significant expense in
`terms of both time and money.
`Id. at 6:7–10. When a service technician is nearby, but not at the site of
`quick service restaurant establishment 10, the ’040 patent specification
`discloses that a “remote adjustment” still is made and remote adjustments in
`this context allow a service technician “to service many more establishments
`and solve many more issues more efficiently by making remote adjustments
`than by incurring site visits.” Id.at 6:32–35. Remote adjustment addresses
`the need to save time and money for repairs in both cases. Id. at 2:13–29.
`Our interpretation of “remote” also is consistent with the ’040 patent
`specification’s use of the term “local” to mean on-site at establishment 10.
`The ’040 patent specification contrasts “local” with “remote” such that a
`parameter is adjusted locally when it is adjusted on-site at establishment 10,
`and remotely when it is adjusted from a location away from the site of the
`establishment 10. Id. at 4:3–17 and 43–48, 8:21–24; see Pet. 10–11.
`Our interpretation is consistent with claims 1 and 18. We reject the
`parties’ positions that the definition should include “accessible through a
`wide area network” (Pet. 10) or other limitations recited in claims 1 and 18
`(PO Resp. 11). Including other claimed features in a definition of “remote”
`would render the recital of these claim features superfluous. See Stumbo v.
`Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
`claim constructions that render phrases in claims superfluous).
`
`10
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`These other limitations–“remote review, “remote adjustment,” “a
`facility remote from the location of the establishment,”–also support our
`interpretation of “remote” to mean “not at the site of.” Thus, remote review
`and adjustment are provided “from a facility remote from the location of the
`establishment,” i.e., not at the site of the quick service restaurant, when the
`base station is connected to a WAN. Parameters also are “locally adjustable
`at the establishment,” i.e., at the site of the establishment, in claims 1 and 18.
`3M’s expert, Mr. Gafford, testifies that “remote” is a location “remote
`from the drive-through, quick service restaurant establishment.” Ex. 2003
`¶ 32. Mr. Gafford testifies that this meaning follows from the ’040 patent’s
`disclosure that maintenance costs are controlled by allowing adjustment
`without having to travel to the establishment. Id.
`Our interpretation is consistent with the interpretation of “remote” in
`Appeal 2015-004783 of Reexamination Control 95/002,239 for Patent No.
`8,005,455, which issued from a parent application of the ’040 patent, and
`from which the ’040 patent claims priority as a continuation. Ex. 1017, 6–9.
`2. “a base station having the ability to connect
`to a wide area communication network” (claims 1, 18)
`HME asserts that “a base station “having the ability to connect to a
`wide area communication network” means “able to be communicatively
`joined to a wide area network.” Pet. 12. 3M argues that this limitation must
`be interpreted with other limitations in claims 1 and 18 such as “said base
`station configured to permit remote review and remote adjustment” . . . when
`said base station is connected to said wide area communication network.”
`PO Resp. 12. 3M argues that these limitations require the base station to
`have a necessary hardware and software configuration. Id.; Ex. 2003 ¶ 34.
`
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`We interpret “a base station having the ability to connect to a wide
`area communication network” to mean “able to be communicatively joined
`to a wide area network.” This interpretation is consistent with an ordinary
`meaning of “ability,” which is “[t]he quality of being able to do something
`. . . . [t]he quality of being suitable for or receptive to a specified treatment;
`capacity.” Pet. 12 (quoting THE AMERICAN HERITAGE COLLEGE DICTIONARY
`(4th Ed. 2002) (Ex. 1007, APP2791)). An ordinary meaning of “connect”
`includes “[t]o join to or by means of a communication circuit.” Id. (quoting
`Ex. 1007, APP2792).
`This interpretation is consistent with language of claims 1 and 18,
`which recite “said base station being configured to permit remote review and
`remote adjustment of said at least one parameter” “when said base station is
`connected to said wide area communication network.” Ex. 1001, 9:39–43,
`10:45–49; see also Pet. Reply 4. The base station’s ability to connect, i.e., to
`communicate over, a WAN allows remote review and remote adjustment of
`intercom system parameters, when the base station is connected to a WAN.
`Communications from a remote facility can be sent to the base station when
`the base station is connected to, i.e., in communication with, the WAN.
`Claims 1 and 18 distinguish between “having the ability to connect”
`and “when said base station is connected.” We therefore decline to interpret
`“having the ability to connect” to mean “connected to the wide area
`communication network.” See Dell Inc. v. Acceleron, LLC, ___ F.3d ___,
`2016 WL 1019075, *5 (Fed. Cir. Mar. 15, 2016) (meaning should be given
`to all claim terms); Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316
`(Fed. Cir. 2010) (use of different terms implies different meanings unless
`evidence indicates patentee used terms interchangeably).
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`Our interpretation also is consistent with the ’040 patent specification,
`which discloses a base station “connectable to a wide area communication
`network.” Ex. 1001, 2:49–50 and 59–60, 3:45–46 and 53–56, 4:39–42. The
`’040 patent specification also discloses that a plurality of parameters can be
`adjusted via the wide area network when the base station is “connected to a
`wide area network.” Id. at 4:8–10. Thus, the ’040 patent specification does
`not use the terms “connectable” and “connected” interchangeably. The base
`station has the ability to connect to a WAN. When the base station is
`connected to a WAN, intercom system parameters can be adjusted remotely.
`The prosecution history of the ’040 patent supports this distinction
`and our interpretation of “a base station having the ability to connect to a
`wide area communication network” as “able to be communicatively joined
`to a wide area network.” Original claim 1 recited an intercom system for a
`drive-through quick service restaurant comprising a plurality of headsets, a
`base station, a speaker, and a microphone, “wherein the base station is
`connectable to a wide area communication network in order to enable
`remote adjustment of the plurality of parameters.” Ex. 1002, APP0391.
`In response to an Office Action rejecting claims 1–5, 10–12, 17–20,
`and 25–27 under 35 U.S.C. § 103(a), 3M cancelled original claims 1–45 and
`submitted new claims 46–75. See id. at APP0319–APP0326 (Office Action,
`dated Sept. 4, 2012), APP0300–APP0305 (Amendment cancelling claims 1–
`45 and adding new claims 46–75). New independent claims 46 and 62 both
`recited “a base station connectable to a wide area communication network”
`and “remote review and adjustment of said at least one parameter when said
`base station is connected to said wide area communication network.” Id. at
`APP0301, APP0303, APP0306–APP0307.
`
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`The Examiner then rejected finally claims 46–75 on the grounds of
`obviousness-type double patenting but indicated that claims 46–75 would be
`allowable if they were amended to overcome the double patenting rejection.
`Id. at APP0266–APP0267. 3M filed a terminal disclaimer on May 10, 2013,
`and the Examiner issued a Notice of Allowance on May 20, 2013. Id. at
`APP0256–APP0259, APP0242–APP0246.
`Subsequently, 3M filed an Amendment & Request for Continued
`Examination on August 20, 2013. Id. at APP0074–APP0081. In that paper,
`3M presented the following amendments to claims 46 and 62:
`“a base station having the ability to connect to a wide area
`communication network;”
`
`“permit remote review and remote adjustment of said at least one
`parameter from a facility remote from the location of the
`establishment when said base station is connected to said wide
`area communication network;”
`
`Ex. 1002, APP0075, APP0077.
`In the remarks that accompanied this amendment, 3M emphasized that
`Applicants’ intent is not to change the claim scope with this
`amendment. Applicants assert that the word “connectable,” by
`itself, refers to the ability to connect. But this addition is made
`to further make clear that this is what the Applicant intends the
`claim to require. Applicants note that claims 46 and 62 do not
`require that the base station is actually connected to a wide area
`network, but that the base station has the ability to connect, in
`other words is connectable, to a wide area network.
`
`Id. at APP0080.
`3M clearly and unambiguously indicated that “having the ability to
`connect” in claims 46 and 62 (renumbered as claims 1 and 18, see id. at
`APP0054, APP0063) means “connectable” rather than connected to a WAN.
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`3M does not identify any disclosure in the ’040 patent specification of
`any software or hardware that gives base station 14 the ability to connect to
`a WAN. See PO Resp. 11–12. Instead, 3M cites Mr. Gafford’s declaration,
`but Mr. Gafford states only that the base station must have the necessary
`hardware and software without any citation to the ’040 patent specification
`or any other authority. See Ex. 2003 ¶¶ 33–34.
`We find no disclosure in the ’040 patent specification of hardware or
`software that gives base station 14 an ability to connect to a WAN. Figure 1
`illustrates base station 14 separated from wideband communication network
`20.1 An unnumbered lightning bolt is interposed between base station 14
`and WAN 20, but the specification does not identify or discuss this element.
`Another lightning bolt is shown between base station 14 and headsets 16a–n.
`The ’040 patent specification discloses only that base station 14 connects to
`headsets 16a–n via a wireless or a wired connection. Ex. 1001, 5:21–35. No
`disclosure is provided for any connection between base station 14 and WAN
`20. It may be that base station 14 connects to WAN 20 by a wired or
`wireless local/LAN connection (lightning bolt) similar to headsets 16a–n.
`There is no disclosure whether base station 14 connects to WAN “directly”
`or indirectly via intermediary devices. Nor is there any disclosure of any
`software or software used to connect base station 14 and WAN 20, or base
`station 14 and headsets 16a–n. Mr. Gafford’s testimony in reliance on “the
`teachings of the ’040 patent” (Ex. 2003 ¶¶ 33, 36, 62) thus is not persuasive.
`
`
`1 The drawings “must show every feature of the invention specified in the
`claims.” 37 C.F.R. § 1.83(a). Applicants must furnish a drawing where
`necessary for an understanding of the subject matter sought to be patented
`when that subject matter admits of illustration. See 37 C.F.R. § 1.81.
`
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`The ’040 patent specification discloses only that the parameters of
`intercom system 12 can be accessed “remotely via a wide area network 20,
`such as by way of the internet.” Ex. 1001, 6:19–20. 3M and Mr. Gafford do
`not cite any other disclosure of WAN 20 to help a skilled artisan determine
`what hardware or software may be needed or used to communicate over
`WAN 20 or connect to WAN 20. PO Resp. 6–7; see Ex. 2003 ¶¶ 23–28, 25
`(the technician may access the intercom system via the Internet); Ex. 1016,
`APP3257:18–APP3258:4 (testifying that no other disclosure is provided).
`Even if the ’040 patent specification disclosed a particular connection
`between base station 14 and WAN 20, we would not limit the claims to such
`an embodiment when the language of claims 1 and 18 is broader. Claims 1
`and 18 do not require the base station to have an ability to connect directly to
`a wide area communication network. The base station merely needs to have
`the ability to connect to, i.e., communicate over, a WAN in some unspecified
`manner. There is no disclaimer in the specification of intermediate devices
`or limitation on the means by which base station 14 is connectable to WAN
`20. 3M does not identify any such disclosure either. PO Resp. 11–12, 25.
`Mr. Gafford testifies that skilled artisans would understand certain
`hardware and software must be present in base station 14 so it has an ability
`to connect to a WAN, but he identifies only TCP/IP for an Internet, and cites
`no support for this assertion. Ex. 2003 ¶¶ 33–34, 59–62. We therefore
`accord little weight to his testimony, particularly in view of the silence of the
`’040 patent specification and claim language. See 37 C.F.R. § 52.65(a);
`Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (expert
`may explain terms of art and state of the art but cannot be used to prove the
`proper or legal construction of any instrument or writing).
`
`16
`
`
`
`IPR2015-00482
`Patent 8,694,040 B2
`
`
`3. “An intercom system . . . configurable for a drive-through,
`quick service [restaurant] establishment” (claims 1, 18)
`3M argues that “[a]n intercom system . . . configurable for a drive-
`through, quick service restaurant establishment” in claim 1 and “a drive-
`through quick service establishment” in claim 18 is limiting because the
`preamble provides antecedent basis for “the establishment” recited in the
`body of claims 1 and 18. PO Resp. 14–16. 3M argues that the preamble is
`not a statement of intended use. Id. at 16–17. 3M argues that the preamble
`should be given weight, but does not indicate what scope or interpretation
`should be accorded to the preamble. Id. at 14–16; Pet. Reply 6.
`In view 3M’s acknowledgement that the Wireless 6000 and 3M
`Wireless disclose intercom systems for quick service restaurants, as recited
`in claims 1 and 18,2 it is unnecessary to determine whether the preambles of
`claims 1 and 18 should be given patentable weight. The issue is whether the
`teachings of the Wireless 6000 and 3M Wireless can be combined with those
`of the HME Pro850 and Telex Intercom Handbook to render obvious claims
`1–32, as discussed below in HME’s asserted grounds.
`4. “a template of parameters” (claims 1, 18)
`HME argues that the limitation “a template of parameters” is “a
`plurality of parameters stored together as a group.” Pet. 14. 3M argues that
`
`
`2 3M argues that the “HME Wireless 6000 discusses a wireless intercom
`system for use in a drive-through quick service restaurant establishment.”
`PO Resp. 21; Ex. 2003 ¶ 50. 3M argues that the “3M Wireless discloses a
`wireless intercom system for use in a drive-through quick service restaurant
`establishment.” PO Resp. 41; Ex. 2003 ¶ 53. 3M contends that wireless
`intercoms for quick service restaurants, such as HME Wireless 6000 and 3M
`Wireless are designed for simplicity of setup and operation. PO Resp. 49.
`
`17
`
`
`
`IPR2015-00482
`Patent 8,694,040 B2
`
`this phrase means “a plurality of parameters that can be stored and used to
`restore the intercom system to a working configuration.” PO Resp. 13–14.
`We interpret “a template of parameters” to mean “a group of intercom
`system settings that control operation of the intercom system and can be
`saved together in a file.” This meaning is consistent with the ’040 patent
`specification, which discloses that the operation of intercom system 12 is
`governed by several parameters including a transmit or receive audio level
`(volume) for each headset 16a–n as well as separate volume or gain controls
`for each direction of communication. Ex. 1001, 5:36–44. The ’040 patent
`specification discloses that:
`Many other parameters are also possible, such as lane
`assignment, receive volume, transmit 45 volume, master volume
`for a speaker associated with the drive-through facility,
`individual volume for each channel received by the drive-
`through facility, base station receive volume, base station
`transmit volume, page, greeter, vehicle detection alert, vehicle
`approaching alert, for examples. Many, if not all, of these
`parameters may be available to one or more staff members for
`individual adjustment.
`
`Id. at 5:44–52.
`Because multiple parameters may be used to set up, adjust, and
`balance intercom system 12, multiple parameters may be formed into sets of
`parameters. Id. at 6:51–55. “A given set of parameters for intercom system
`12 may form a template 22, i.e., a set of parameters for intercom system 12
`that, when implemented, will give rise to a particular operational
`characteristic for intercom system 12.” Id. at 6:55–59. Template 22 may be
`saved or stored for later recall to memory 24 that is local to establishment 10
`or be saved remotely from establishment 10 in memory 26. Id. at 7:1–52.
`
`18
`
`
`
`IPR2015-00482
`Patent 8,694,040 B2
`
`
`Our interpretation also is consistent with the claims. Claim 1 recites
`that “at least one parameter can be saved into a template of parameters for
`later use.” Claim 18 recites that “at least one parameter for each of said
`plurality of headsets is grouped into a template of parameters that can be
`saved for later use.” Claims 4 and 20 depend, respectively, from claims 1
`and 18 and recite “said template of parameters can be saved locally at the
`establishment.” Claims 5 and 20 depend from claims 1 and 18, respectively,
`and recite “said template of parameters can be saved to a location remote
`from the establishment.” Thus, one or more parameters can be grouped into
`a template of parameters and saved for a later unspecified use. See claim 2.
`We decline to require a template of parameters to be “used to restore
`the intercom system to a working configuration” as 3M argues. PO Resp.
`14. Claims 1 and 18 do not recite any particular “later use” of the template
`of parameters. The ’040 patent specification discloses that a template of
`parameters can be used to reset the intercom system, to change operational
`parameters, or to set up
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