Paper 14
`Trials@uspto.gov
`571-272-7822 Entered: February 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
`NOVATEL WIRELESS, INC.,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01670
`Patent 8,648,717 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
`NOVATEL WIRELESS, INC.,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01670
`Patent 8,648,717 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01670
`Patent 8,648,717 B2
`
`
`I. INTRODUCTION
`Enfora, Inc., Novatel Wireless Solutions, Inc., and Novatel Wireless,
`Inc. (collectively, “Petitioner”) filed a Petition (“Pet.”) requesting inter
`partes review of claims 1–7, 10–20, and 23–30 of U.S. Patent No. 8,648,717
`B2 (“the ’717 patent,” Ex. 1001). Paper 2. M2M Solutions LLC (“Patent
`Owner”) timely filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides:
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the information presented in the Petition and
`the Preliminary Response, we are not persuaded that Petitioner has
`established a reasonable likelihood that it would prevail in its challenges to
`claims 1–7, 10–20, and 23–30 of the ’717 patent. Accordingly, we decline
`to institute an inter partes review of these claims.
`
`A. Related Matters
`Petitioner and Patent Owner cite a number of judicial matters in the
`United States District Court for the District of Delaware involving the ’717
`patent, as well as matters involving ancestor patents of the ’717 patent. See
`Pet. 1–2; Paper 5. Petitioner concurrently filed another Petition for inter
`partes review challenging claims 1–7, 10–14, 18, and 21–30. Pet. 2;
`IPR2015-01672. Three additional Petitions for inter partes review have
`
`
`
`2
`
`
`
`IPR2015-01670
`Patent 8,648,717 B2
`
`been filed by other petitioners challenging various claims of the ’717 patent.
`See IPR2015-01823; IPR2016-00054; IPR2016-00055.
`
`B. The ’717 Patent (Ex. 1001)
`The ’717 patent is generally directed to a programmable
`communicator device. Ex. 1001, Abstract. The ’717 patent has three
`independent claims—claims 1, 24, and 29. Claim 1 is reproduced below:
`
`
`
`A programmable communicator device comprising:
`1.
`programmable
`interface
`for
`establishing
`a
`a
`communication link with at least one monitored technical device,
`wherein the programmable interface is programmable by
`wireless packet switched data messages; and
`a processing module for authenticating one or more
`wireless transmissions sent from a programming transmitter and
`received by
`the programmable communicator device by
`determining if at least one transmission contains a coded number;
`wherein the programmable communicator device is
`configured to use a memory to store at least one telephone
`number or IP address included within at least one of the
`transmissions as one or more stored telephone numbers or IP
`addresses if the processing module authenticates the at least one
`of the transmissions including the at least one telephone number
`or IP address and the coded number by determining that the at
`least one of the transmissions includes the coded number, the one
`or more stored telephone numbers or IP addresses being numbers
`to which the programmable communicator device is configured
`to and permitted to send outgoing wireless transmissions;
`wherein the programmable communicator device is
`configured to use an identity module for storing a unique
`identifier that is unique to the programmable communicator
`device;
`and wherein the one or more wireless transmissions from
`the programming transmitter comprises a General Packet Radio
`Service (GPRS) or other wireless packet switched data message;
`and wherein the programmable communicator device is
`configured to process data received through the programmable
`
`
`
`3
`
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`IPR2015-01670
`Patent 8,648,717 B2
`
`
`interface from the at least one monitored technical device in
`response to programming instructions received in an incoming
`wireless packet switched data message.
`
`
`
`C. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`Kennedy, III et al.
`US 5,771,455
`June 23, 1998
`(hereinafter
`“Kennedy”)
`
`Ex. 1026
`
`Gaukel
`
`Van Bergen
`
`US 6,072,396
`
`June 6, 2000
`
`Ex. 1027
`
`WO 00/17021
`
`Mar. 30, 2000
`
`Ex. 1028
`
`Specification of the Bluetooth System, v1.0B (1999)
`(hereinafter “Bluetooth Specification”)
`
`Ex. 1034
`
`Applicant’s Admitted Prior Art (AAPA)—excerpts from Ex. 1001, 1:30–
`4:9 (“Background of the Invention” section of the ’717 patent).
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–7, 10–20, and 23–30 of the ’717 patent
`based on the asserted grounds of unpatentability set forth in the table below.
`References
`Basis
`Claim(s) Challenged
`Kennedy and AAPA
`§ 103(a)
`1–7, 10–18, and 24–30
`Kennedy, AAPA, and
`§ 103(a)
`19 and 20
`Gaukel
`Kennedy, AAPA, and
`Van Bergen
`Kennedy, AAPA, and
`Bluetooth Specification1
`
`§ 103(a)
`
`§ 103(a)
`
`23
`
`4
`
`
`
`
`1 Petitioner proposes this as an alternative ground. Pet. 44.
`4
`
`
`
`
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`IPR2015-01670
`Patent 8,648,717 B2
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`
`II. CLAIM CONSTRUCTION
`Petitioner and Patent Owner propose constructions for various terms
`of the ’717 patent. Pet. 10–16; Prelim. Resp. 2–6; Papers 10, 12. Based on
`Petitioner’s unpatentability challenges, we determine that these terms, as
`well as all remaining terms, need not be construed explicitly at this time.
`III. ANALYSIS
`A. “Processing Module for Authenticating”
`All of the asserted grounds of unpatentability in this Petition rely on
`Kennedy as allegedly teaching or suggesting the following limitation of
`independent claims 1, 24, and 29: “a processing module for authenticating
`one or more wireless transmissions sent from a programming transmitter and
`received by the programmable communicator device by determining if at
`least one transmission contains a coded number.” See Pet. 32–35, 50, 54.
`Petitioner contends that Kennedy teaches this limitation in two ways. Id.
`First, Petitioner argues that Kennedy discloses a “handshake protocol”
`in which a challenge is issued and a response is transmitted in return. Pet.
`33–34 (citing Ex. 1026, 16:44–48, 18:61–19:58; Ex. 1004 ¶ 140). Kennedy
`discloses: “If the platform receives a challenge, then at block 332 the
`platform returns a response based on the challenge received, a key particular
`to the mobile unit, and an encryption algorithm.” Ex. 1026, 19:35–38.
`Petitioner argues that “[a] ‘key’ in this instance is a ‘coded number.’”
`Pet. 33. Petitioner further argues: “In this manner, the units 16, 216 only
`permit receipt of the programming transmission if it contains, in part, a key
`that i[s] ‘particular to the mobile unit,’ i.e., that is unique to the mobile unit
`in the system in which it is used.” Id. at 34.
`
`
`
`5
`
`
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`IPR2015-01670
`Patent 8,648,717 B2
`
`
`Although Petitioner has established that Kennedy discloses
`transmitting a response based, in part, on a key, Petitioner has not shown
`Kennedy discloses that the key itself, which Petitioner contends is the
`claimed “coded number,” is transmitted. As noted above, Kennedy explains
`that “the platform returns a response based on the challenge received, a key
`particular to the mobile unit, and an encryption algorithm.” Ex. 1026,
`19:36–38 (emphasis added); see also id., Fig. 10 (block 332 states “platform
`returns response”). Kennedy then explains how the key and the algorithm
`are known by the mobile unit and the platform:
`As noted, the key used in the generation of the response is a
`function of the mobile unit and may be generated from a lookup
`table of numbers shared by both mobile unit 216 and platform
`224 indexed by the MIN/ESN of mobile unit 216. The
`encryption algorithm, also known by both mobile unit 216 and
`platform 224 can be any appropriate mathematical algorithm,
`and may be modified periodically, as can the lookup table, to
`maximize security.
`Ex. 1026, 19:39–46 (emphasis added). Thus, Kennedy teaches that the key
`and the algorithm are used in the generation of the response, but Kennedy
`does not state that the key and the algorithm themselves are transmitted.
`Rather, the mobile unit and the platform know them or can derive them.
`As such, Petitioner has not shown that Kennedy’s “handshake
`protocol” teaches or suggests that “at least one transmission contains a coded
`number,” i.e., the key, as required by claims 1, 24, and 29.
`Second, Petitioner argues that “the ‘coded number’ can also be
`satisfied by the inclusion of the telephone number (or other unique
`identifier) of the programmable communicator device with the transmission
`itself. This is done as a matter of course in mobile telephone
`communications.” Pet. 34. Petitioner contends that “[o]nly if the telephone
`6
`
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`IPR2015-01670
`Patent 8,648,717 B2
`
`number of the programmable communicator device (or other unique
`identifier) is received as part of a transmission will the transmission be
`read.” Id. (citing Ex. 1004 ¶ 140). Therefore, according to Petitioner, “the
`checking of this information by the unit inherently performs the recited
`‘authentication’ step, with or without the key discussed above.” Id.
`(emphasis added) (citing Ex. 1004 ¶ 140).
`The Federal Circuit has stated:
`[t]o establish inherency, the extrinsic evidence must make clear
`that the missing descriptive matter is necessarily present in the
`thing described in the reference, and that it would be so
`recognized by persons of ordinary skill. Inherency, however,
`may not be established by probabilities or possibilities. The mere
`fact that a certain thing may result from a given set of
`circumstances is not sufficient.
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
`quotation marks omitted).
`In support of its inherency argument, Petitioner cites paragraph 140 of
`the Declaration of Randall A. Snyder (“Snyder Declaration”) (Ex. 1004).
`See Pet. 34. Paragraph 140 of the Snyder Declaration states: “I have
`prepared the following claim chart showing how each and every element of
`Claim 1 reads on the disclosure of Kennedy and AAPA.” Ex. 1004 ¶ 140.
`Paragraph 140 then includes a claim chart for claim 1 that appears to be
`largely identical to the argument in the Petition. Id. With respect to this
`inherency argument, the Snyder Declaration and Petitioner’s arguments
`appear to be identical. Paragraph 140 of the Snyder Declaration does not
`cite any underlying evidence supporting the assertion that the mobile unit in
`Kennedy necessarily would check a transmission to determine “if the
`telephone number of the [mobile unit] (or other unique identifier) is received
`
`
`
`7
`
`
`
`IPR2015-01670
`Patent 8,648,717 B2
`
`as part of a transmission” and only would read those transmissions that
`include the telephone number or other unique identifier. Ex. 1004 ¶ 140;
`Pet. 34; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”). Nor does paragraph 140 of the Snyder Declaration
`provide further analysis supporting the assertion of inherency. As such, we
`are not persuaded that Petitioner has proffered sufficient evidence to
`demonstrate that the mobile unit in Kennedy necessarily performs a check to
`see if the telephone number or other unique identifier of the mobile unit is
`included in the transmission and that, only if the number or identifier is
`included, the mobile unit reads the transmission.
`Based on the record before us, we are not persuaded by Petitioner’s
`arguments that Kennedy teaches or suggests “a processing module for
`authenticating one or more wireless transmissions sent from a programming
`transmitter and received by the programmable communicator device by
`determining if at least one transmission contains a coded number.” Because
`all challenges in this Petition depend on Kennedy as teaching or suggesting
`this limitation, we are not persuaded Petitioner has established a reasonable
`likelihood of prevailing in showing that the challenged claims would have
`been obvious as alleged.
`
`
`IV. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Petition
`establishes a reasonable likelihood that Petitioner would prevail in showing
`claims 1–7, 10–20, and 23–30 of the ’717 patent are unpatentable under
`35 U.S.C. § 103(a).
`
`
`
`8
`
`
`
`IPR2015-01670
`Patent 8,648,717 B2
`
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`9
`
`
`
`
`
`
`
`IPR2015-01670
`Patent 8,648,717 B2
`
`
`
`
`
`For PETITIONER:
`Christopher W. Kennerly
`Naveen Modi
`Timothy P. Cremen
`chriskennerly@paulhastings.com
`naveenmodi@paulhastings.com
`timothycremen@paulhastings.com
`
`For PATENT OWNER:
`Jeffrey N. Costakos
`Michelle A. Moran
`jcostakos@foley.com
`mmoran@foley.com
`
`
`
`10
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