Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 1 of 10 PageID #: 7486
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`M2M SOLUTIONS LLC,
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`Plaintiff,
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`v.
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`SIERRA WIRELESS AMERICA, INC. and :
`SIERRA WIRELESS, INC.,
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`. Defendants.
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`Civil Action No. 12-30-RGA
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`M2M SOLUTIONS LLC,
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`Plaintiff,
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`v.
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`ENFORA, INC., NOVATEL WIRELESS
`SOLUTIONS, INC., and NOV ATEL
`WIRELESS, INC.,
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`Defendants.
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`Civil Action No. 12..:32-RGA
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`M2M SOLUTIONS LLC,
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`Plaintiff,
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`v.
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`MOTOROLA SOLUTIONS, INC., TELIT
`COMMUNICATIONS PLC, and TELIT
`WIRELESS SOLUTIONS, INC.
`Defendants.
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`Civil Action No. 12-33-RGA
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`1
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`M2M
`Ex. 2005
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 2 of 10 PageID #: 7487
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`MEMORANDUM ORDER
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`The Court issued a Memorandum Opinion construing the claims in U.S. Patent No.
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`8,094,010 ('"010 patent") on November 12, 2013. (D.I. 92). Before the Court is Defendants'
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`Motion for Reconsideration of the Court's Claim Construction of"Processing Module" and
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`"Programmable Interface" Based on the Federal Circuit En Banc Decision in Williamson v.
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`CitrixOnline. (D.1.180). Themotionisfullybriefed. (D.1.180, 195, 198). The Court granted
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`· the motion to address an intervening change in the applicable law and heard oral argument on
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`September24, 2015. (D.I. 194) Upon reflection, for the reasons that follow, the Court reaches
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`the same determination made in its original claim construction opinion. (D.I. 92).
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`In Williamson v. Citrix Online, LLC, the Federal Circuit overruled prior precedent by
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`deciding to "abandon characterizing as 'strong' the presumption that a limitation lacking the
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`words 'means' is not subjectto § 112, para. 6:" Williamson v. Citrix Online, LLC, 792 F.3d
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`1339, 1349 (Fed. Cir. 2015) (en bane). In doing so, the court noted that it "will apply the
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`presumption as [it had] done prior to Lighting World, without requiring any heightened
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`evidentiary showing .... " Id. Accordingly, "[w]hen a claimterm lacks the words 'means,"'
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`there is still a presumption that § 112 'il 6 does not apply, but "the presumption can be overcome
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`and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to 'recite
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`sufficiently definite structure' or else recites 'function without reciting sufficient structure for
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`performing that function."' Id. (citation and internal quotations omitted). The standard remains
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`"whether the words of the claim are understood by persons of ordinary skill in the art to have a
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`sufficiently definite meaning as the name for structure." Id. (citation omitted).
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`In addressing the specific claims at issue, the Federal Circuit in Williamson noted that
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`"'[m]odule' is a well-known nonce word that can operate as a substitute for 'means' in the
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`M2M
`Ex. 2005
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 3 of 10 PageID #: 7488
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`context of_§ 112, para. 6." Id. at 1350. The Court explained that such "[g]eneric terms ... that
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`reflect nothing more than verbal constructs may be used in a claim in a manner that is ·
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`tantamount to using the word 'means·' because they typically do not connote sufficiently definite
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`structure and therefore may invoke § 112 para. 6." Id. (citation and internal quotations omitted).
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`The Federal Circuit ultimately found that the presumption against the application of§ 112 ·ir 6
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`had been overcome, because, as used in the specific claim at issue, 1 ''the word 'module' does not
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`provide any indication of structure because it sets forth the same black box recitation of structure
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`for providing the same specified function as if the term 'means' had been used." Id.
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`a. "Programmable Interface~'
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`This Court previously construed the term "programmable interface" to mean: "An
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`interface that is able to be directly programmed." (D.I. 92 at 10). In doing so, it rejected
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`Defendants' argument that§ 112·-,r 6 applied, reasoning that "'programmable interface' connotes
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`sufficient structure to one of skill in the art, and both component terms have well understood
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`definitions:" (Id. at 11 ). Quoting Lighting World, however, the opinion twice referenced the
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`strength of the presumption against the application of§ 112 if 6, due to the absence of the word
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`"means~" (Id. at 10-11).
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`Here, Defendants·' argument regarding the "programmable interface" term is rather
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`cursory, and emphasizes that this Court "relied on the then-existing 'strong presumption"
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`standard [from] Lighting World, which Williamson overruled." (D.I. 180 at 12). While they
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`concede that the term programmable "might be well understood," Defendants argue it still "does
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`1 The entire claim limitation at issue in Williamson read: "a distributed learning control module for receiving
`communications transmitted between the presenter and the audience member computer systems and for relaying the
`communications to an intended receiving computer system and for coordinating the operation of the streaming data
`module." Williamson, 792 F.3d at 1350.
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`M2M
`Ex. 2005
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 4 of 10 PageID #: 7489
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`not give the claim element sufficient structure:" (Id.). Plaintiff argues that Williamson is of no
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`consequence to the Court's construction of "programmable interface," because Williamson did
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`not address any analogous claim language. (D.I. 195 at 19). Additionally, Plaintiff points out
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`that Williamson, despite weakening it, nonetheless confirmed that a rebuttable presumption
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`against applying § 112 ii 6 continues to apply in the absence of the word "means," which
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`Defendants can only overcome by showing that the claim term fails to connote sufficiently
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`definite structure. (Id.).
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`The Court sees no reason to alter its original construction of the term "programmable
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`interface." While the presumption against the application of§ 112 if 6 is no longer a "strong" one
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`after Williamson, it nonetheless remains a presumption that Defendants must.affirmatively
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`overcome. See Williamson, 792 F.3d at 1349. This Court previously concluded that ''both
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`component terms have well understood definitions," and therefore "connote[] sufficient structure
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`to one of skill in the art." (D.I. 92 at 11 ). Defendants provide no argument that interface is a
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`nonce word that could trigger § 112 if 6, nor do they present any expert testimony to show that
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`the words of the claim would not be understood by persons of ordinary skill in the art as having
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`sufficiently definite structure. Defendants' cursory argument that the admittedly well(cid:173)
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`understood term "programmable" does not give the claim element sufficient structure, does
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`little-ifanything-to meet its burden under Williamson of"demonstrat[ing] thatthe claim term
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`fails to recite sufficiently definite structure or else recites function without reciting sufficient
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`structure for performing that function." Williamson, 792 F.3d at 1350 (citation and internal
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`quotations omitted). Accordingly, the mere fact that the Federal Circuit modified the
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`presumption against the application of§ 112 if 6 from a strong one to an ordinary one, does not
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 5 of 10 PageID #: 7490
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`change the fact that Defendants have failed to overcome this presumption, and the Court declines .
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`to change its previous determination as to the·"programmable interface~' term.2
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`b. "Processing Module"
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`This Court previously construed the term "processing module" to mean: "Components or
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`units of a computer program." (D.I. 92 at 12). The Court rejected Defendants' argument that the
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`term was a means-plus-function limitation without corresponding structure, and, in doing so,
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`stated that its analysis with regard to "programmable interface" was applicable to this term as
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`well. (Id.). The Court did, however, also rely on the decisions of other district courts that had
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`"construed 'module' as connoting sufficient structure to avoid the application of§ 112 ·ir 6," in
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`making its determination that § 112 if 6 did not apply. (Id. at 13).
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`Defendants emphasize Williamson's weakening of the presumption against-the
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`application of§ 112 ·ir 6. (D.I. 180 at 11-12). Defendants argue further that Williamson provides
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`a clear directive that "module~' is a nonce word that invokes § 112 if 6, and that the word
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`"processing" does not provide sufficient corresponding structure. (Id. at 12). They also contend
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`that the c1aim limitation as a whole is in a format consistent with traditional means-plus-function
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`claim limitations, in that it merely replaces the word "means" with "module" .and recites the
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`term's function. (Id.). Plaintiff argues that the surrounding claim language "expressly explains
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`how the 'processing module' is able to perform its recited function of authenticating a received
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`incoming transmission-i.e., 'by determining ifthe at least one transmission contains the coded
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`number."' (D.I. 195 at 17). Plaintiff asserts that this additional language in the claim limitation
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`2 Plaintiff also asserts that, since this Court's Markman ruling, it has developed "substantial record evidence
`demonstrating that, in addition to its dictionary definitions, the claim term 'programmable interface' was used in the
`prior art to designate a general class of structures." (D.I. 195 at 11). Indeed, the expert declaration of Dr. Ray W.
`Nettleton, while not necessary to reach the Court's present conclusion, appears to lend support to this Court's
`original determination that the claim term '"programmable interface' connotes sufficient structure to one of skill in
`the art." (D.I. 92 at 11; D.I. 197 at 5-10).
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 6 of 10 PageID #: 7491
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`provides sufficient algorithmic structure such that a person of ordinary skill in the art would
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`understand it as using a specific method of authenticating an incoming transmission. (Id.). This
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`"simple three-step algorithm," Plaintiff argues, provides a specific, narrowly described manner
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`of authenticating the incoming messages, "[r]ather than trying to capture the multitude of
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`different ways that a received incoming transmission might potentially be authenticated .... "
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`(Id. at 18).
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`"Structure," with regard to computer-implemented inventions, most often takes the form
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`of"analgorithm for performing the claimed function." Williamson, 792 F.3dat 1352 (citation
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`omitted); see also Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298-99 (Fed. Cir. 2014). The
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`algorithm must provide "some explanation of how the [claim term] performs the claimed
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`function." Blackboard, Inc. v. Desire2Leam, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). This
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`requirement, consistent with the goal of§ 112·ir 6, is intended to prevent parties from
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`"attempt[ing] to capture any possible means for achieving [an] end." Noah Sys., Inc. v. Intuit
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`Inc., 675 F.3d 1302, 1317 (Fed. Cir.2012). A patentee can express an algorithm "in any
`understandable terms including as a mathematical -formula, in prose, or as a flow chart, or in any
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`other manner that provides sufficient structure." Typhoon Touch Techs., Inc. v. Dell, Inc., 659
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`F.3d 1376, 1385 (Fed. Cir. 2011) (citation and internal quotations omitted). In the software
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`context, "the patent need only disclose sufficient structure for a person of skill in the field to
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`provide an operative software program for the specified function." Id. (citation omitted).
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`"Structure may [] be provided by describing the claim limitation's operation .... [which]
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`is more than just its function; it is how the function is achieved in the context of the invention."
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`Apple, 757 F.3d at 1299. The Federal Circuit has held that "[e]ven if a patentee elects to use a
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`'gene~c' claim temi, such as 'a nonce word or a verbal construct,' properly construing that term
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 7 of 10 PageID #: 7492
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`... may still provide sufficient structure such that the presumption against means-plus-function
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`claiming remains intact." Id. Accordingly, "if a limitation recites a term with a known structural
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`meaning, or recites either a known or generic term with a sufficient description of its operation,
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`the presumption against means-plus-function claiming remains intact." Id. at 1300 (emphasis
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`added).
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`Here, it is probably the case that the word "processing" by itself fails to provide sufficient
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`structure in theterm "processing module." The Court finds, however, that Defendants have not
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`overcome the presumption that § 112 if 6 does not apply. They do not "demonstrate[] that the
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`claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting
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`sufficient structure for performing that function."' Williamson, 792 F.3d at 1349 (citation
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`omitted)
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`The entire claim limitation at issue reads: 3
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`a processing module for authenticating an at least one transmission sent from a
`programming transmitter and received by the programmable communicator device,
`the at least one transmission including a coded number and at least one telephone
`number or Internet Protocol (IP) .address corresponding to an at least one
`monitoring device, wherein the processing module authenticates the at least one
`transmission by determining if the at least one transmission contains the coded
`number, the processing module authenticating the at least one transmission if the
`transmission includes the coded number.
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`(D.I. 1-2 at 12).
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`Plaintiff, through the Expert declaration of Dr. RayW. Nettleton, has supported its
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`assertion that the entire claim limitation recites sufficient structure for a person of skill in the art
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`to be "able to write a software program for implementing such an algorithm for use in a wireless
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`data module .... " (D.I. 197 at 5). Dr. Nettleton states: "The surrounding claim language in the
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`3 In Williamson, the Federal Circuit emphasized that analyzing the claim limitation in question requires
`consideration of the "entire passage" of the claim limitation, rather than simply looking at the principal phrase at
`issue. See Williamson, 792 F.3d at 1350.
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 8 of 10 PageID #: 7493
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`'processing module' limitation expressly explains how this authenticating function is to be
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`performed. Indeed, the claim language states that the particular manner by which the 'processing
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`module' can carry out authenticating is 'by determining ifthe at least one transmission contains
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`the coded number."' (Id. at 3). Dr. Nettleton further explains that a person of skill in the art
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`would understand the intrinsic record disclosures "as comprising a simple three-step algorithm."
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`(Id. at 5).4
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`Defendants, on the other hand, present no expert testimony to prove that a person of skill
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`in the art would not understand the claim limitation as providing sufficient structure. Rather,
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`Defendants rely on arguments in their briefthat "the processing module limitation, as a whole, is
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`in a format consistent with traditional means-plus-function claim limitations" and "[t]he claim_s
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`do not describe how the module interacts with other components ... in a way that might ...
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`impart structure to the module as recited in the claim." (D.I. 180 at 12) (citations internal and
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`quotations omitted) (alterations in original). Tellingly, Defendants do not address the additional
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`claim language which Plaintiff argues provides sufficient algorithmic structure within the claim
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`limitation itself. Defendants do not establish by any evidence-let alone clear and convincing
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`. evidence-that the above claim limitation does not provide sufficient algorithmic structure. See
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`Williamson, 792 F.3d at 1349. Accordingly, they have failed to overcome the presumption that
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`the claim is not subject to § 112 if 6. See id.
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`In the Court's view, the "processing module" claim limitation is not the type of claim
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`where Plaintiff is trying to "capture any possible means for achieving [an] end." Noah Sys., Inc.
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`4 In pertinent part, Dr. Nettleton explained further:
`A POSIT A would appreciate the three steps of this authentication algorithm as being the following:
`(1) identifying a coded number contained in a received incoming transmission; (2) retrieving a coded
`number stored locally in memory on the receiving device; and (3) comparing the coded number
`from the transmission with the coded number retrieved from memory to determine whether they
`match.
`(D.I. 197 at 5).
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 9 of 10 PageID #: 7494
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`v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012). Indeed, the claim limitation describes how
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`this authentication process takes place in considerable detail. 5 Here, much like in Apple, the
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`limitation recites a "generic term with a sufficient description of its operation, [rendering] the
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`presumption against means-plus-function claiming [] intact." Apple, 757 F.3d 1286, 1300 (Fed.
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`Cir. 2014). Despite the fact that the claim recites a function, the immediately following words
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`provide algorithmic structure for performing that function. (D.I. 1-2 at 12). Accordingly, even
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`under the presumption as understood after Williamson, Defendants have not met their burden of
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`overcoming the presumption that§ 112 if 6 does not apply, because they do not demonstrate that
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`"the claim term fails to recite sufficiently definite structure or else recites function without
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`reciting sufficient structure forperformingthat function." Williamson, 792 F.3d at 1349 (citation
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`and internal quotations omitted).
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`5 Following the language reciting the function of the "processing module," the claim limitation recites the following
`explanation of the algorithmic structure for performing that function:
`the at least one transmission including a coded number and at least one telephone number or Internet
`Protocol (IP) address corresponding to an at least one monitoring device, wherein the processing
`module authenticates the at least one transmission by determining if the at least one transmission
`contains the coded number, the processing module authenticating the at least one transmission if the
`transmission includes the coded number.
`(D.I. 1-2 at 12).
`By contrast, the entirety of the claim limitation at issue in Williamson consisted of"distributed learning
`control module" and three separate statements written in means-plus-function fashion: "[1] for receiving
`communications transmitted between the presenter and the audience member computer systems and [2] for relaying
`the communications to an intended receiving computer system and [3] for coordinating the operation of the
`streaming data module." Williamson, 792 F.3d at 1350.
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`Case 1:12-cv-00030-RGA Document 215 Filed 10/02/15 Page 10 of 10 PageID #: 7495
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`After having considered the submissions of the parties and hearing oral argument on this
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`matter, IT IS HEREBY ORDERED that, as used in the asserted claims of U.S. Patent No.
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`8,094,010 ('"010 patent"):
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`1. The term "a programmable interface" is construed to mean "an interface that is
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`able to be directly programmed."
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`2. The term "processing module" is construed to mean "components or units of a
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`computer program."
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`It is SO ORDERED this 2-_ day of October, 2015.
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