Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HM ELECTRONICS, Inc.,
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`Petitioner,
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`v.
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`3M INNOVATIVE PROPERTIES COMPANY,
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`Patent Owner.
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`Patent No. 8,694,040
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`Issue Date: April 8, 2014
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`Title: REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM
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` FOR AN ESTABLISHMENT
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,694,040
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`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1-.80 & 42.100-.123
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................... 1 
`A.  Grounds for Standing (37 CFR § 42.104 (a)) ....................................... 1 
`Fee for Inter Partes Review (37 CFR § 42.15(a)) ................................ 2 
`B. 
`C.  Mandatory Notices (37 CFR § 42.8(b)) ................................................ 2 
`i. 
`Real Party in Interest (37 CFR § 42.8(b)(1)) .............................. 2 
`ii. 
`Other Proceedings (37 CFR § 42.8(b)(2)) .................................. 2 
`iii.  Designation of Counsel and Service Information (37 CFR
`§§ 42.8(b)(3)-(4)) ........................................................................ 3 
`Proof of Service (37 CFR §§ 42.6(e) and 42.105(a)) ............................ 4 
`D. 
`Introduction and Identification of the Claims Being Challenged (37
`CFR § 42.104(b)(1)) ........................................................................................ 4 
`III.  Background of the ‘040 Patent ........................................................................ 8 
`A. 
`Effective Filing Date of the ‘040 patent ................................................ 8 
`B. 
`Person of Ordinary Skill in the Art ....................................................... 8 
`IV.  Claim Construction (37 CFR § 42.104(b)(3)) ................................................. 9 
`A. 
`“Remote” ............................................................................................... 9 
`B. 
`“Having the Ability to Connect to a Wide Area Communication
`Network” ............................................................................................. 12 
`“Ordering Point” .................................................................................. 13 
`C. 
`“Template of Parameters” ................................................................... 14 
`D. 
`“Vehicle Alert” .................................................................................... 14 
`E. 
`Identification of Specific Statutory Grounds for Challenge (37 CFR §
`42.104(b)(2)) .................................................................................................. 14 
`VI.  Detailed Explanation and Evidence Supporting Grounds for Challenge
`(37 CFR §§ 42.104(b)(4)-(5)) ........................................................................ 16 
`A.  Ground 1: Obviousness of Claims 1-32 Based on the PRO850
`Manual in View of the Intercom Handbook and the HME
`Document ............................................................................................ 16 
`i. 
`Disclosure of the PRO850 Manual ........................................... 16 
`ii. 
`Disclosure of the Intercom Handbook ...................................... 20 
`iii.  Disclosure of the HME Document ............................................ 21 
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`V. 
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`-i-
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`v. 
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`iv.  Rationale for Combining the Teachings of the PRO850
`Manual, the Intercom Handbook, and the HME
`Document .................................................................................. 22 
`Comparison of Claims 1-32 to the PRO850 Manual, the
`Intercom Handbook, and the HME Document ......................... 26 
`B.  Ground 2: Obviousness of Claims 1-5, 9-21, and 25-32 Based
`on the PRO850 Manual in View of the Intercom Handbook and
`the 3M Document ................................................................................ 40 
`Disclosures of the PRO850 Manual and the Intercom
`i. 
`Handbook .................................................................................. 40 
`Disclosure of the 3M Document ............................................... 40 
`ii. 
`iii.  Rationale for Combining the Teachings of the PRO850
`Manual, the Intercom Handbook, and the 3M Document ........ 40 
`iv.  Comparison of Claims 1-5, 9-21, and 25-32 to the
`PRO850 Manual, the Intercom Handbook, and the 3M
`Document .................................................................................. 42 
`C.  Ground 3: Obviousness of Claims 6-8 and 22-24 Based on the
`PRO850 Manual in View of the Intercom Handbook, the 3M
`Document, and the Telex Manual ....................................................... 49 
`Disclosures of the PRO850 Manual, the Intercom
`i. 
`Handbook, and the 3M Document ............................................ 49 
`Disclosure of the Telex Manual ................................................ 50 
`ii. 
`iii.  Rationale for Combining the Teachings of the PRO850
`Manual, the Intercom Handbook, the 3M Document, and
`the Telex Manual ...................................................................... 50 
`iv.  Comparison of Claims 6-8 and 22-24 to the PRO850
`Manual, the Intercom Handbook, the 3M Document, and
`the Telex Manual ...................................................................... 51 
`VII.  CONCLUSION .............................................................................................. 53 
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`Attachment A. Proof of Service of the Petition
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`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`Petitioner HM Electronics, Inc. (“HME” or “Petitioner”) respectfully
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`petitions for inter partes review of claims 1-32 of U.S. Patent No. 8,694,040 (“the
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`‘040 patent”) (Ex. 1001) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. §
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`42.100 et seq.
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`I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
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`A. Grounds for Standing (37 CFR § 42.104 (a))
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`Petitioner certifies it is not barred or estopped from requesting inter partes
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`review of the ‘040 patent. Neither Petitioner, nor any party in privity with
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`Petitioner, has filed a civil action challenging the validity of any claim of the ‘040
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`patent. The ‘040 patent has not been the subject of a prior inter partes review by
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`Petitioner or a privy of Petitioner.
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`Petitioner also certifies this petition for inter partes review is filed within
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`one year of the date of service of a complaint alleging infringement of a patent.
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`Petitioner was served with a complaint alleging infringement of the ‘040 patent on
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`or about August 4, 2014, captioned No. 14-cv-1000 (SRN/JSM) in the U.S. District
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`Court for the District of Minnesota. A copy of 3M’s original Complaint is attached
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`hereto as Ex. 1014.
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`Because the date of this petition is less than one year from August 4, 2014,
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`this petition complies with 35 U.S.C. § 315(b).
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`B.
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`Fee for Inter Partes Review (37 CFR § 42.15(a))
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`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 06-1910.
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`C. Mandatory Notices (37 CFR § 42.8(b))
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`i. Real Party in Interest (37 CFR § 42.8(b)(1))
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`The real party in interest for this petition is Petitioner HM Electronics, Inc.
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`(“HME”) located at 14110 Stowe Drive, Poway, California 92604.
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`ii. Other Proceedings (37 CFR § 42.8(b)(2))
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`The ‘040 patent is the subject of a civil action in the U.S. District Court for
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`the District of Minnesota, captioned 3M Co. et al. v. HM Electronics, Inc., No. 14-
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`cv-1000 (SRN/JSM). The ‘040 patent is also the subject of a separate petition for
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`inter partes review filed contemporaneously with this Petition, based on different
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`prior art.
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`The grandparent and parent of the ‘040 patent, U.S. Patent Nos. 7,599,679
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`(“the ‘679 patent”) and 8,005,455 (“the ‘455 patent”), are the subject of a civil
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`action in the U.S. District Court for the District of Minnesota, captioned 3M Co. et
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`al. v. HM Electronics, Inc., No. 12-cv-0553 (SRN/JSM). The ‘679 patent is also
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`the subject of Inter Partes Patent Reexamination No. 95/002,238 (reexamination
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`file history attached as Ex. 1003), and the ‘455 patent is the subject of Inter Partes
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`Patent Reexamination No. 95/002,239 (reexamination file history attached as Ex.
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`1004). The civil action regarding the ‘679 and ‘455 patents has been stayed
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`pending the outcome of the reexaminations. All claims of the ‘679 and ‘455
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`patents currently stand rejected over the prior art cited by Petitioner, which
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`includes the prior art cited in this Petition (the “PRO850 combinations”) and the
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`prior art cited in Petitioner’s separate contemporaneously-filed petition (the
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`“Gosieski combinations”).
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`iii. Designation of Counsel and Service Information (37 CFR §§
`42.8(b)(3)-(4))
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`Petitioner identifies the following counsel (a power of attorney accompanies
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`this Petition):
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`Lead Counsel
`Charles D. Segelbaum
`Reg. No. 42,138
`csegelbaum@fredlaw.com
`(612) 492-7115
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`Fredrikson & Byron, P.A.
`200 South 6th Street, Suite 4000
`Minneapolis, MN 55402
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`
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`Backup Counsel
`Adam R. Steinert
`Pro Hac Vice Pending
`asteinert@fredlaw.com
`(612) 492-7436
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`Kurt J. Niederluecke
`Reg. No. 40,102
`kniederluecke@fredlaw.com
`(612) 492-7328
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`Fredrikson & Byron, P.A.
`200 South 6th Street, Suite 4000
`Minneapolis, MN 55402
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`Service information for counsel is provided above. Counsel may also be
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`served by fax at (612) 492-7077.
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`D.
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`Proof of Service (37 CFR §§ 42.6(e) and 42.105(a))
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`Proof of service of this Petition is provided in Attachment A.
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`II.
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`INTRODUCTION AND IDENTIFICATION OF THE CLAIMS
`BEING CHALLENGED (37 CFR § 42.104(B)(1))
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`This is a petition for inter partes review of all of the claims (1-32) of U.S.
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`Patent No. 8,694,040 (“the ‘040 patent”), titled “Remotely Configurable Wireless
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`Intercom System for an Establishment,” issued on April 8, 2014, to Awiszus and
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`assigned to 3M. A copy of the ‘040 patent is included in Exhibit 1. The ‘040
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`patent is generally directed to an intercom system for a drive-through restaurant,
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`where staff members use wireless headsets in communication with a base station,
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`and one or more of the system parameters can be configured by a remote user over
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`a wide area network (“WAN”).
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`The ‘040 patent has two independent claims, claims 1 and 18. Each of these
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`claims requires “an intercom system … configurable for a drive-through, quick
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`service [restaurant] establishment” with “a base station having the ability to
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`connect to a wide area communication network” and “headset[s] configured for
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`two-way wireless communication with said base station[,]” where the base station
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`is “configured to permit remote review and remote adjustment of … at least one
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`parameter” related to the “volume level of communication[s]” with the headsets.
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`Significantly, the claims of the ‘040 patent are nearly identical to the claims
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`of its parent ‘679 and ‘455 patents, all of which claims currently stand rejected in
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`two pending inter partes reexaminations. The ‘040 patent examiner recognized
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`that there was no inventive distinction between the ‘040 and ‘679 claims,
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`prompting him to issue double-patenting rejections that 3M cured with a terminal
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`disclaimer. (See Ex. 1002 at APP0255-67.) While 3M has made minor changes to
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`the claim language and moved some elements from dependent claims into
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`independent claims, the claimed subject matter between all three patents is
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`substantially the same. A comparison between Claim 1 of the ‘040 patent and the
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`rejected claim language of its ‘679 and ‘455 parent patents is illustrative:
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`‘040 Patent Claim 1
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`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;
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`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;
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`Rejected ‘679 and ‘455 Patent Claim
`Language
`‘679 Patent Claim 15:
`“A remotely configurable wireless
`intercom system as in claim 1 wherein
`said establishment comprises a quick
`service restaurant.”
`‘679 Patent Claim 1:
`“… a base station connectable to a wide
`area communication network; …”
`‘679 Patent Claim 1:
`“…a plurality of headsets in two-way
`wireless communication with said base
`station; …”
`‘455 Patent Claim 1:
`“…said wireless communication
`between each of said plurality of
`headsets and said base station being
`configurable with at least one
`parameter; …
`said at least one parameter being
`remotely reviewable and being remotely
`adjustable via said wide area
`communication network, wherein said at
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`said at least one parameter being locally
`adjustable at the establishment;
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`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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`least one parameter comprises an audio
`level.”
`‘679 Patent Claim 1:
`“… and wherein the remotely
`configurable wireless intercom system
`comprises a plurality of parameters, at
`least one of said plurality of parameters
`being adjustable by said staff of said
`establishment, …”
`‘679 Patent Claim 1:
`“…said at least one parameter being
`remotely reviewable and being remotely
`adjustable via said wide area
`communication network; …”
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`‘679 Patent Claim 1:
`“…and wherein said plurality of
`parameters are grouped into a template
`of parameters.”
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`‘679 Patent Claim 2:
`“A remotely configurable wireless
`intercom system as in claim 1 wherein
`said template is saved for future recall.”
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`Although 3M submitted the papers and prior art from the inter partes
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`reexaminations of the ‘679 and ‘455 patents during prosecution of the ‘040 patent,
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`there is no evidence that the examiner ever considered the substance of those
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`references. (See Ex. 1002 at APP0265-80.) To the contrary, the examiner did not
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`acknowledge – let alone explain the basis for – his decision to grant patent claims
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`that are essentially identical to claims that have been rejected in two separate
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`reexaminations.
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`The prior art references cited and discussed in this petition for inter partes
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`review are five printed publications describing on-sale products – including two
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`describing prior art products from HME and one describing a prior art product
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`from 3M itself. These are a subset of the references cited in the co-pending
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`reexaminations of the ‘679 and ‘455 parent patents, and the equivalent claims of
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`the parent patents all currently stand rejected based on these references.
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`The examiners in the co-pending reexaminations have already found that it
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`is proper to combine these references in the manner proposed by HME, and that
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`those combinations render 3M’s equivalent patent claims obvious under 35 U.S.C.
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`§ 103. None of the claims in the ‘040 patent add inventive subject matter to the
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`claims of the parent patents, and the ‘040 claims should be rejected for the same
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`reasons as the ‘679 and ‘455 claims.
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`Thus, the references relied on herein raise a reasonable likelihood that HME
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`will prevail with respect to at least one challenged claim, and HME’s petition for
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`inter partes review of the ‘040 patent should be granted.
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`III. BACKGROUND OF THE ‘040 PATENT
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`A. Effective Filing Date of the ‘040 patent
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`The ‘040 patent issued from U.S. Application No. 13/214,746, with a filing
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`date of August 22, 2011. The ‘746 application was a continuation of U.S.
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`Application No. 12/548,596, filed Aug. 27, 2009, now U.S. Patent No. 8,005,455,
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`which was a continuation of U.S. Application No. 11/276,048, filed Feb. 10, 2006,
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`now U.S. Patent No. 7 ,599,679. During reexamination of the parent ‘455 patent,
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`3M attempted to establish an earlier conception date for the subject matter of the
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`‘048 application, which the examiner rejected as unsupported by 3M’s alleged
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`evidence. (See Ex. 1004 at APP2055-56.) Accordingly, Petitioner states that the
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`priority date for the ‘040 patent is February 10, 2006.
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`B.
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`Person of Ordinary Skill in the Art
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`A person of ordinary skill in the art in the field of the ‘040 patent in the 2006
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`time frame would have been someone with a bachelor of science in either electrical
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`engineering or computer science, and between five and ten years’ experience
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`designing intercom systems. (See Declaration of Scott Hoeptner (“Hoeptner
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`Decl.”), attached as Exhibit 5, at ¶ 10.)
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`IV. CLAIM CONSTRUCTION (37 CFR § 42.104(B)(3))
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`In this proceeding, claims must be given their broadest reasonable
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`construction in light of the specification. 37 CFR § 42.100(b).1 The broadest
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`reasonable construction should be determined, in part, by taking into account the
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`subject matter 3M contends infringes the claims and the constructions 3M has
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`advanced in litigation. Also, if 3M contends terms in the claims should be read to
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`have a special meaning, those contentions should be disregarded unless 3M also
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`amends the claims consistent with 35 U.S.C. § 112 to make them expressly
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`correspond to those contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14,
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`2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). Unless stated
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`otherwise below, Petitioner contends that each term in the claims should be given
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`its plain and ordinary English meaning.
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`A.
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`“Remote”
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`While the ‘040 patent frequently uses the words “remote” and “remotely,”
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`the patent specification does not provide any special definition for them. The
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`1 HME notes that the “broadest reasonable construction” is not the appropriate
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`standard for claim construction in litigation. See generally Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc). Accordingly, HME may propose a
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`different claim construction in litigation.
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`Microsoft Computer Dictionary (5th ed. 2002) defines “remote” as “Not in the
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`immediate vicinity, as a computer or other device located in another place (room,
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`building, or city) and accessible through some type of cable or communications
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`link.” (Ex. 1006 at APP2787.) The ‘040 patent repeatedly associates “remote”
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`connections with the use of a wide area network (or WAN) as opposed to a local
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`network connection. (See, e.g., Ex. 1001 at APP0002 (“the base station is
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`connectable to a wide area communication network to enable remote adjustment of
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`the plurality of parameters”); id. at APP0002 ll. 2:54-56 (“The parameter is
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`remotely reviewable and being remotely adjustable via the wide area
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`communication network.”).) Accordingly, HME submits that the broadest
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`reasonable construction of “remote” in light of the specification is “not in the
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`immediate vicinity, and accessible through a wide area network.”
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`In reexamination of the ‘455 parent patent, 3M attempted to argue that the
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`word “remote” required a connection from an unspecified “great distance” from
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`the intercom system. (See Ex. 1004 at APP1937-38.) The examiner correctly
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`rejected that argument, because nothing in the specification puts a particular bound
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`on how far away a user needs to be to make a “remote” connection. To the
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`contrary, what the specification identifies as giving a user the ability to connect to
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`the system “from great distances” is the simple use of an Internet connection,
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`which was not novel when 3M filed its patent application in 2006. (See Ex. 1001
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`at APP0007 ll. 2:38-41 (“A technician, or other user, may access the intercom
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`system, for example, via the internet, from great distances and may be able to
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`immediately remedy any of a number of adjustment-based issues.”) (emphasis
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`added).)
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`Likewise, the patent’s distinction between “local” and “remote” network
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`resources is simply an issue of whether those resources exist on the local area
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`network (LAN), or whether the user connects to them through a wide area network
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`(WAN). Figure 1 makes this clear:
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`(Id. at APP0004.) Figure 1 is a network diagram, with no discussion of physical
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`distances. Indeed, the only description of the WAN in Figure 1 is the amorphous
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`spiky blob labeled “20.” (See id. at APP0009 ll. 6:19-20.) Thus, while the ability
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`to use a WAN over an extended distance is one of its obvious benefits, any WAN
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`connection will be “remote” to the network, regardless of the actual physical
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`distance involved. HME’s proposed construction reflects this broadest reasonable
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`meaning.
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`B.
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`“Having the Ability to Connect to a Wide Area
`Communication Network”
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`As discussed in Section IV(A), above, the only disclosure of the manner in
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`which the ‘040 patent’s intercom system connects to a wide area network is the
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`amorphous spiky blob labeled “20” in Figure 1. The American Heritage College
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`Dictionary (4th ed. 2002) defines “ability” as “The quality of being able to do
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`something…. The quality of being suitable for or receptive to a specified
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`treatment; capacity[.]” (Ex. 1007 at APP2791.) It defines “connect” as “To join to
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`or by means of a communications circuit.” (Id. at APP2792.) Accordingly, HME
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`submits that the broadest reasonable construction of “having the ability to connect
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`to a wide area communication network” in light of the specification is “able to be
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`communicatively joined to a wide area network.”
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`During reexamination of the ‘455 parent patent, 3M argued that the phrase
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`“connectable to a wide are communication network” required some form of
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`specialized “components [within the physical housing of the intercom base station]
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`… that enable the device to connect to a WAN, such as a network card, a modem,
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`and can run web server applications [sic], as examples.” (Ex. 1004 at APP2332.)
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`3M also asserted that a device only has “connectability to a WAN” if it “becomes a
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`node in the network.” (Id.) The examiner correctly rejected those arguments,
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`recognizing that two devices are “connectable” to each other even if the connection
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`is an “indirect” one using an intermediary computer or networking device. (See,
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`e.g., id. at APP2215-17.) Furthermore, it bears noting that none of the elements
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`3M would require for “connectability” are discussed – or even mentioned – in the
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`patent specification.
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`HME’s proposed construction matches the dictionary definitions of the
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`claim terms, the (lack of) disclosure in the patent specification, and the examiner’s
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`construction in the reexamination of the ‘455 parent patent. Accordingly, HME’s
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`proposed construction properly sets forth the broadest reasonable interpretation of
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`the claim language.
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`C.
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`“Ordering Point”
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`The phrase “ordering point” only appears once in the ‘040 patent disclosure.
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`In the “Brief Summary of the Invention,” the patent states that “[i]n an
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`embodiment, wireless communication is established between an ordering point and
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`at least one of the plurality of headsets.” (Ex. 1001 at APP0008 ll. 3:32-34.) As
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`HME noted during the reexamination of the ‘455 parent patent, the closest
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`substantive description of any component that could be considered an “ordering
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`point” is the patent’s discussion of the “post mounted speaker and microphone”
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`that would be mounted in or near a “menu/order board” in the drive-through lane
`
`of a quick service restaurant. (See id. at APP0007 ll. 1:21-44; Ex. 1004 at
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`APP1989-90.) 3M did not dispute HME’s interpretation, and instead conceded
`
`that HME correctly identified the “ordering point” in the specification and the prior
`
`art. (See Ex. 1004 at APP1882.) Accordingly, HME submits that the broadest
`
`reasonable construction of “ordering point” to a person of ordinary skill in the art
`
`consistent with the patent specification is “a speaker and microphone mounted in
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`or near a menu board, used to take a customer’s order.”
`
`D.
`
`“Template of Parameters”
`
`The ‘040 patent specification repeatedly states that a plurality of parameters
`
`may be “grouped into a template of parameters.” (See, e.g., Ex. 1001 at APP0008
`
`ll. 4:21-23, 4:52-53, 4:64-65.) Accordingly, HME contends that the broadest
`
`reasonable construction of “template of parameters” consistent with the patent
`
`specification is “a plurality of parameters stored together as a group.”
`
`E.
`
`“Vehicle Alert”
`
`The phrase “vehicle alert” does not appear in the body of the ‘040 patent
`
`specification. The specification does, however, refer to a “vehicle detection alert”
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`and “vehicle approaching alert” as system parameters associated with drive-
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`through restaurant intercom systems. (See, e.g., Ex. 1001 at APP0009 ll. 5:36-50.)
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`Such alert signals are well known in quick service restaurant intercom systems.
`
`(See, e.g., Ex. 1010 at APP2876 (“Optional External Vehicle Detector
`
`Installation”), APP2880 (“As a customer enters the drive-thru lane, you will hear
`
`an alert tone (single beep) in your headset[.]”); Ex. 1011 at APP2913 (“Vehicle
`
`Alert System”), APP2914 (“The vehicle alert system provides a signal to the base
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`station to indicate a customer is present at the menu sign.”).) Accordingly, HME
`
`contends that the broadest reasonable construction of “vehicle alert” to a person of
`
`ordinary skill in the art consistent with the patent specification is “a signal
`
`indicating the presence of a vehicle in a drive-through lane.”
`
`V.
`
`IDENTIFICATION OF SPECIFIC STATUTORY GROUNDS FOR
`CHALLENGE (37 CFR § 42.104(B)(2))
`
`Petitioner respectfully requests the cancellation of claims 1-32 of the ‘040
`
`patent. The statutory grounds for the challenge are set forth below (all citations are
`
`to pre-AIA statues):
`
`Ground 35 USC § Claims
`1
`103(a)
`1-32
`
`103(a)
`
`1-5, 9-21, 25-
`32
`
`103(a)
`
`6-8, 22-24
`
`2
`
`3
`
`
`
`References
`PRO850 Manual (Ex. 1009) in view of
`Intercom Handbook (Ex. 1012), in further
`view of HME Document (Ex. 1010)
`PRO850 Manual (Ex. 1009) in view of
`Intercom Handbook (Ex. 1012), in further
`view of 3M Document (Ex. 1011)
`PRO850 Manual (Ex. 1009) in view of
`Intercom Handbook (Ex. 1012), in further
`view of 3M Document (Ex. 1011) and
`Telex Manual (Ex. 1013)
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
`
`VI. DETAILED EXPLANATION AND EVIDENCE SUPPORTING
`GROUNDS FOR CHALLENGE (37 CFR §§ 42.104(B)(4)-(5))
`
`A. Ground 1: Obviousness of Claims 1-32 Based on the PRO850
`Manual in View of the Intercom Handbook and the HME
`Document
`
`Claims 1-32 are obvious under 35 U.S.C. § 103(a) in view of the PRO850
`
`Manual, the Intercom Handbook, and the HME Document as set forth below.
`
`i. Disclosure of the PRO850 Manual
`
`The HM Electronics PRO850 Wireless Intercom Operating Instructions
`
`(“the PRO850 Manual,” attached as Ex. 1009) was publicly distributed to
`
`purchasers of HME’s PRO850 intercom product, beginning in September 2003.
`
`(See Hoeptner Decl. (Ex. 1005) ¶¶ 6 & 7.) The PRO850 manual discloses a
`
`wireless intercom system, as depicted in the figure below:
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`(Ex. 1009 at APP2815.) The intercom system is configurable (“configuration
`
`displays provide customized configuration settings for the base station” (id. at
`
`APP2827)), with a base station that is connectable to a computer (id. at APP2815)
`
`and multiple headsets in two-way wireless communication with the base station
`
`(“Base stations can be configured with up to four receivers and two transmitters,
`
`supporting up to four Beltpacs in fulltime transmit, full-duplex operation.” (Id.)
`
`Each Beltpac has a “headset connector” for connecting it to a headset. (See, e.g.,
`
`id. at APP2817.)). The wireless communication is configurable with multiple
`
`system parameters, which can be adjusted locally using the front panel of the base
`
`station, as illustrated in the figure below:
`
`Figure on Page 24
`(Id. at APP2838; see also, e.g., id. at APP2824). The system parameters are also
`
`reviewable and adjustable on a connected computer running the companion PC850
`
`
`
`software:
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`(Id. at APP2849.)
`
`
`(Id. at APP2850.) Multiple system parameters may be stored together in a single
`
`file as a group or “template,” as that term is used in the ‘040 patent:
`
`(Id. at APP2849.)
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`(Id. at APP2835.)
`
`
`
`
`
`
`
`(Id. at APP2840.) These parameter template files may be stored either on the base
`
`station itself or on a computer running the PC850 software, as illustrated above. A
`
`saved template may further be restored from either the base station (see “Load
`
`Configuration Settings from File,” id. at APP2835, reproduced above) or a
`
`computer (see id. at APP2850).
`
`-19-
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
`
`ii. Disclosure of the Intercom Handbook
`
`The Handbook of Intercom Systems Engineering (1st ed., rev. 4, 2002) (the
`
`“Intercom Handbook,” attached as Exhibit 12) describes itself as both “a
`
`systematic tutorial for the novice user and an encyclopedic reference for the
`
`designer in the midst of a project.” (Ex. 1012 at APP2938.) It describes a wide
`
`variety of intercom systems, along with applications and tips for using them.
`
`Among numerous other intercom configurations, the Intercom Handbook discloses
`
`the ability to extend computer control of an intercom system over a WAN.
`
`Specifically, the Intercom Handbook discusses a similar system to that of the
`
`PRO850 Manual – an intercom system connected to a PC running configuration
`
`software via a serial RS-232 port. The Intercom Handbook teaches that such a
`
`system can be extended beyond a standard serial connection, stating that “a number
`
`of possibilities exist for remote configuration, control, and monitoring.” (Id. at
`
`APP3024.) One of these possibilities is shown in Figure 5.14, copied below:
`
` (Id.)
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,694,040
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`Figure 5.14 shows a local computer (“Local PC”) running configuration
`
`software connected serially to an intercom system (in this particular example, a
`
`product called “ADAM”), and a remote computer (“Remote PC”) connected to the
`
`local computer via modems and a phone line (a WAN connection) using the
`
`commercially available PC Anywhere software. In this configuration, the remote
`
`user has “full ability to control and monitor the [intercom system] remotely.” (Id.)
`
`iii. Disclosure of the HME Document
`
`The HM Electronics, Inc., Wireless 6000 Wireless Drive-Thru Audio
`
`System Installation Instructions (the “HME Document,” © August 2003) discloses
`
`an intercom system meant for use primarily at a quick service restaurant. (See,