IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`M2M SOLUTIONS LLC,
`a Delaware limited liability company,
`
`Plaintiff,
`
`v.
`
`SIERRA WIRELESS AMERICA, INC., et al.,
`
`Defendants.
`
`M2M SOLUTIONS LLC,
`a Delaware limited liability company,
`
`Plaintiff,
`
`v.
`
`ENFORA, INC., et al.,
`
`Defendants.
`
`M2M SOLUTIONS LLC,
`a Delaware limited liability company,
`
`Plaintiff,
`
`v.
`
`TELIT COMMUNICATIONS PLC, et al.,
`
`Defendants.
`
`C.A. No. 12-030-RGA
`
`CONFIDENTIAL – FILED
`UNDER SEAL
`
`C.A. No. 12-032-RGA
`
`CONFIDENTIAL – FILED
`UNDER SEAL
`
`C.A. No. 12-033-RGA
`
`CONFIDENTIAL – FILED
`UNDER SEAL
`
`1
`
`M2M
`Ex. 2008
`
`

`
`PLAINTIFF’S ANSWERING BRIEF IN
`OPPOSITION TO DEFENDANTS’ MOTION FOR
`RECONSIDERATION OF THE COURT’S
`CLAIM CONSTRUCTIONS OF “PROCESSING MODULE” AND
`“PROGRAMMABLE INTERFACE” BASED ON THE FEDERAL
`CIRCUIT EN BANC DECISION IN WILLIAMSON V. CITRIX ONLINE
`
`BAYARD, P.A.
`Richard D. Kirk (rk0922)
`Stephen B. Brauerman (sb4952)
`Vanessa R. Tiradentes (vt5398)
`Sara E. Bussiere (sb5725)
`222 Delaware Avenue, Suite 900
`Wilmington, DE 19801
`(302) 655-5000
`rkirk@bayardlaw.com
`sbrauerman@bayardlaw.com
`vtiradentes@bayardlaw.com
`sbussiere@bayardlaw.com
`
`Attorneys for Plaintiff,
`M2M SOLUTIONS LLC
`
`August 3, 2015
`
`OF COUNSEL:
`
`FOLEY & LARDNER LLP
`Marc N. Henschke
`111 Huntington Avenue, Suite 2600
`Boston, MA 02199
`(617) 342-4000
`mhenschke@foley.com
`
`Jeffrey N. Costakos
`Kadie M. Jelenchick
`Matthew J. Shin
`777 E Wisconsin Avenue
`Milwaukee, WI 53202
`(414) 271-2400
`jcostakos@foley.com
`kjelenchick@foley.com
`
`Jason J. Keener
`Jeffrey J. Mikrut
`321 North Clark Street
`Chicago, IL 60654
`(312) 832-4500
`jkeener@foley.com
`jmikrut@foley.com
`
`2
`
`M2M
`Ex. 2008
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION. ................................................................................................. 1
`
`PROCEDURAL AND FACTUAL BACKGROUND............................................ 2
`
`A. The Court’s November, 2013 Markman Ruling Construing
`The Claim Terms “Processing Module” and “Programmable Interface” ........2
`
`B.
`
`Intrinsic Record Disclosures Explaining How the “Processing
`Module” Performs Its Recited Authenticating Function..................................3
`
`C. A Simple Three-Step Algorithm For Performing The Recited
`Authenticating Function That Can Readily Be Implemented In Software ..... 6
`
`D. Usage Of The Claim Term “Programmable Interface” In The
`Prior Art To Designate A General Class Of Structures ...................................7
`
`III.
`
`ARGUMENT...........................................................................................................7
`
`A. Applicable Legal Standards ............................................................................ 7
`
`1. Algorithms As Structure For Software-Implemented Claim Terms. .......7
`
`2.
`
`3.
`
`Standards For Determining When Section 112(6) Will Apply To
`Claim Terms Lacking The Word “Means”............................................. 9
`
`Standards For Determining Whether Adequate Corresponding
`Structure Exists For Supporting Claim Terms That Are Subject To
`Section 112(6). ......................................................................................11
`
`B. Defendants Fail To Demonstrate That Williamson Requires The
`“Processing Module” Claim Term To Be Governed By Section 112(6)
`Or Held Indefinite Thereunder........................................................................13
`
`1.
`
`2.
`
`Section 112(6) Does Not Apply Because Surrounding Claim
`Language In The “Processing Module” Limitation Connotes
`Sufficient Algorithmic Structure............................................................13
`
`Even If Section 112(6) Did Apply, The “Processing Module”
`Claim Term Would Not Be Indefinite Because Sufficient
`Corresponding Algorithmic Structure Exists In The Specification........15
`
`C. The Williamson Decision Is Of No Consequence To The Court’s
`Previous Construction Of The “Programmable Interface” Claim Term ........15
`
`IV.
`
`CONCLUSION......................................................................................................15
`
`4830-2155-7269.1
`
`3
`
`M2M
`Ex. 2008
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`
`AllVoice Computing PLC v. Nuance Communications, Inc.,
`504 F.3d 1236 (Fed. Cir. 2007)........................................................................12, 14, 15
`
`Apex, Inc. v. Raritan, 325 F.3d 1364 (Fed. Cir. 2003) ........................................................ 2
`
`Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) ...........................7, 10, 13, 14
`
`Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324 (Fed. Cir. 2006)........... 11
`
`Aristocrat Techs. Austl. Pty Ltd. v. International GameTech,
`521 F.3d 1328 (Fed. Cir. 2008)..............................................................................10, 11
`
`B. Braun Med., Inc. v. Abbot, 124 F.3d 1419 (Fed. Cir. 1997)......................................... 11
`
`Beneficial Innovations, Inc. v. Blockdot, Inc., Nos. 2:07-CV-263-TJW-CE,
`2:07-CV-555-TJW-CE, 2010 WL 1441779, (E.D. Tex. April 12, 2010) ................2
`
`Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009).......................8, 14
`
`In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994).........................................................11
`
`Elcommerce.com, Inc. v. SAP AG, 745 F.3d 490 (Fed. Cir. 2014) ................................... 12
`
`Finisar Corp. v. TheDirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) .............8, 9, 12
`
`Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. Cir. 2013) .......................... 8
`
`Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004) ........... 9
`
`Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012)...........................8, 11, 14
`
`Pi-Net International Inc. v. JPMorgan Chase & Co.,
`No. 12-282-RGA, 2014 U.S. Dist. LEXIS 47569, (D. Del. April 7, 2014)..................12
`
`TecSec, Inc. v. Internat. Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013) ....... 11
`
`Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) ..9, 12, 14
`
`Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 U.S. App. LEXIS
`10082 (Fed. Cir. June 16, 2015) ....................................................................1, 9, 13, 15
`
`Miscellaneous Authorities
`Microsoft Computer Dictionary (4th ed. 1999) .....................................................................2
`
`4830-2155-7269.1
`
`ii
`
`4
`
`M2M
`Ex. 2008
`
`

`
`I.
`INTRODUCTION
`
`Plaintiff M2M Solutions LLC (“M2M”) hereby submits its answer in opposition to the
`
`Motion For Reconsideration Of The Court’s Claim Constructions Of “Processing Module”
`
`And “Programmable Interface” (D.I. 180)1 filed by Defendants in response to the Federal
`
`Circuit’s recent decision in Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 U.S. App.
`
`LEXIS 10082 (Fed. Cir. June 16, 2015). Of potential relevance here, Williamson held that the
`
`rebuttable presumption against applying 35 U.S.C. § 112, ¶ 6 (“Section 112(6)”) to non-means
`
`claim terms should be reduced from a “heightened” to an ordinary presumption, and that the
`
`word “module” standing alone may sometimes serve as a “nonce word.” However, for the
`
`reasons demonstrated by M2M below, nothing in the Williamson decision would require the
`
`Court to change its prior constructions of the “processing module” or “programmable
`
`interface” claim terms so as newly to treat them as mean-plus-function limitations, much less
`
`to find either of those terms indefinite as a consequence of such treatment.
`
`As a matter of law, the “processing module” claim term is not governed by Section
`
`112(6) because its surrounding claim language connotes sufficiently definite algorithmic
`
`structure explaining the particular manner in which its recited “authenticating” function is
`
`performed. Even if Section 112(6) were improperly applied (which it should not be), this
`
`would also qualify as adequate corresponding structure to preclude an indefiniteness finding.
`
`With regard to the “programmable interface” claim term, Williamson is simply of no
`
`consequence. Williamson did not address “programmable interface” or analogous claim
`
`language, and the Court’s previous finding that this claim term connotes sufficiently definite
`
`structure renders the presumption unrebuttable whether it be “heightened” or merely ordinary.
`
`1 Unless otherwise noted, all “D.I.” references herein are to CA. No. 12-030-RGA.
`
`4830-2155-7269.1
`
`1
`
`5
`
`M2M
`Ex. 2008
`
`

`
`II.
`PROCEDURAL AND FACTUAL BACKGROUND
`
`A.
`
`The Court’s November, 2013 Markman Ruling Construing The Claim Terms
`“Processing Module” and “Programmable Interface”
`
`In its November, 2013 Markman ruling, the Court construed the claim term
`
`“processing module” to mean “components or units of a computer program.” (D.I. 92 at
`
`12-13). The Court regarded this claim term as “connoting sufficient structure to avoid the
`
`application of §112 ¶6.” (Id.). In reaching that conclusion, the Court found the analysis
`
`from Beneficial Innovations where the same “processing module” language had been
`
`construed to be “especially instructive” and “well-reasoned” because it identified
`
`dictionary definitions for both the words “processing” and “module” that established their
`
`well-understood structural meanings in the art. (Id.) (citing Beneficial Innovations, Inc.
`
`v. Blockdot, Inc., Nos. 2:07-CV-263-TJW-CE, 2:07-CV-555-TJW-CE, 2010 WL
`
`1441779, at *16 (E.D. Tex. Apr. 12, 2010)).
`
`The Court also construed the “programmable interface” claim term as meaning
`
`“an interface that is able to be directly programmed.” (D.I. 92 at 10-12). In declining to
`
`apply Section 112(6), the Court expressly found that this language “connotes sufficient
`
`structure to one of skill in the art” because “both component terms have well understood
`
`[dictionary] definitions.” (Id. at 11). The Court noted that the Federal Circuit had
`
`previously relied upon such definitions to construe “interface” as “[t]he signal connection
`
`and associated control circuits that are used to connect devices.” (Id.) (citing Apex, Inc.
`
`v. Raritan, 325 F.3d 1364, 1374 (Fed. Cir. 2003)). Moreover, the Court observed that the
`
`Microsoft Computer Dictionary defines “programmable” as “[c]apable of accepting
`
`instructions for performing a task or an operation.” (Id.).
`
`4830-2155-7269.1
`
`2
`
`6
`
`M2M
`Ex. 2008
`
`

`
`B.
`
`Intrinsic Record Disclosures Explaining How The “Processing Module”
`Performs Its Recited Authenticating Function
`
`The recited function for the “processing module” of independent Claims 1 and 52
`
`is authenticating a received incoming transmission. (Exh. 1 at 12:27-37; 15:61-16:4).2
`
`The surrounding claim language in the “processing module” limitation expressly explains
`
`how this authenticating function is to be performed. (Id.). Indeed, the claim language
`
`states that the particular manner in which the “processing module” is able to carry out
`
`authenticating is “by determining if the at least one transmission contains the coded
`
`number.” (Id.).3
`
`The ‘010 patent specification likewise discloses that the particular manner in
`
`which the “processing module” acts to authenticate a received incoming transmission is
`
`by determining whether it contains a required coded number: “It is a further object of the
`
`present invention to provide a programmable apparatus, which comprises a processing
`
`means to process coded transmissions and permit only transmissions comprising a coded
`
`number, which determines the authenticity of the message, to be allowed to program the
`
`number to which the said apparatus be linked.” (Exh. 1 at 4:35-40). See also (Id. at
`
`Abstract) (processing module authenticates “by determining whether a received
`
`transmission contains the unique identifier” coded number); (Id. at Figs. 2 & 3)
`
`(“authentic/authenticated message[s]” are described as those “comprising [a] unique
`
`identifier” coded number).
`
`2 All exhibits referenced herein are attached to the Declaration of Marc N. Henschke,
`filed concurrently herewith under separate cover.
`3 In the prosecution history for parent application 11/329,212, the inventor stated the
`following with regard to analogous claims in which a “unique identifier” was recited as
`the exemplary “coded number”: “Applicant believes that both claim 21 and 60 clearly
`describe what is meant by the term ‘authenticating.’ In particular, both claims define
`authenticating as ‘determining if the at least one transmission contains the unique
`identifier.’” (Exh. 2, p. 2222).
`
`4830-2155-7269.1
`
`3
`
`7
`
`M2M
`Ex. 2008
`
`

`
`When describing authenticating relative to the preferred embodiment, the
`
`specification details with even greater particularity that the “processing module” would
`
`be able to determine whether the received incoming transmission contains a required
`
`coded number by comparing a coded number stored locally in memory with the coded
`
`number from the transmission to verify whether they match. See (Exh. 1 at 9:15-10:22).
`
`Indeed, the preferred embodiment of the claimed “programmable communicator” is
`
`described as comprising a SIM card which stores a PUK code in memory. (Id. at 9:24-
`
`34). As the specification explains, the “PUK code is a unique identifier” coded number
`
`“which is different for every SIM card.” (Id.).4 When incoming SMS message
`
`transmissions are received that include certain programming instructions, these
`
`transmissions will be authenticated if they are confirmed to contain a PUK code that
`
`matches the PUK code stored locally on the receiving “programmable communicator”
`
`device. (Id. at 9:15- 10:22). To wit, the “programmable communicator includes a
`
`processing means to determine that the PUK code is correct” in the received incoming
`
`SMS transmissions. (Id. at 9:41-42).
`
`Defendants’ own expert witness, Dr. Seth James Nielson (“Dr. Nielson”), has
`
`repeatedly acknowledged that the above specification passages would be understood by
`
`an ordinarily skilled artisan as teaching that the “processing module” performs
`
`authentication on a received incoming transmission by comparing a locally stored coded
`
`number with the coded number contained in the transmission to determine whether they
`
`4 As Defendants’ expert witness, Dr. Kevin J. Negus (“Dr. Negus”), has opined, “PUK codes
`were obviously extremely well-known prior to the time that the ‘010 patent application was
`filed.” (Exh. 3 at p. 495). See also (Exh. 1 at 14:33-50, 18:7-25) (claiming embodiments
`where the coded number is a “unique identifier” stored in memory on a SIM card).
`
`4830-2155-7269.1
`
`4
`
`8
`
`M2M
`Ex. 2008
`
`

`
`match.5 According to Dr. Nielson, the “‘010 patent envisioned, and provided a written
`
`description for, pre-storing a coded number and comparing that preset and previously
`
`determined number against a coded number contained in a transmission.” (Exh. 4 at ¶
`
`49). Accord (Id. at ¶ 36) (Exh. 5 at ¶ 40) (Exh. 6 at ¶¶ 56, 61, 68). Thus, Dr. Nielson has
`
`opined that a person of “ordinary skill in the art would believe” that the named inventor
`
`was “in possession of a device that performed authentication using a one-to-one
`
`comparison of a received coded number against a pre-stored number.” (Exh. 4 at ¶ 60).
`
`As such, Dr. Nielson has admitted that “[a]uthentication, as described within the ‘010
`
`Patent claims and specification, is narrowly described.” (Exh. 6 at ¶ 54).
`
`The ‘010 prosecution history has consistently taught this same particular manner
`
`of being able to perform the recited authenticating function. Since the very first claim set
`
`in the priority PCT application from 2001, the disclosed way to “determine the
`
`authenticity” of an incoming transmission received from a programming transmitter has
`
`been by “comparing said coded number [from the transmission] with a [stored] preset
`
`number” to verify whether they “coincide.” (Exh. 7, p. 3041). As later recited in the
`
`first claim set from the ‘010 application itself, the “processing module . . .
`
`authenticates[s] the at least one transmission by comparing the coded number with a
`
`preset number” to determine if it “matches.” (Exh. 8, p. 2029). Notably, Dr. Nielson has
`
`further confirmed that a person of ordinary skill would understand that these are in fact
`
`the teachings of the prosecution history. See, e.g., (Exh. 4, ¶ 41) (Exh. 6, ¶ 68).
`
`5 Similarly, as Defendants themselves previously argued with regard to authenticating in
`their Markman briefing, the intrinsic record teaches that all incoming programming
`transmissions “must have a ‘coded number,’ and the system must determine whether
`there is a match between that number and a number stored on the [programmable
`communicator] device before proceeding.” (D.I. 54 at 80).
`
`4830-2155-7269.1
`
`5
`
`9
`
`M2M
`Ex. 2008
`
`

`
`C.
`
`A Simple Three-Step Algorithm For Performing The Recited Authenticating
`Function That Can Readily Be Implemented In Software
`
`M2M’s expert witness, Dr. Ray W. Nettleton (“Dr. Nettleton”), has opined that a
`
`person of ordinary skill in the art6 would understand the intrinsic record disclosures
`
`identified above explaining how the “processing module” performs its recited
`
`authenticating function as comprising a simple three-step algorithm. See Declaration of
`
`Dr. Ray W. Nettleton (“Nettleton Decl.”), filed concurrently herewith, at ¶ 13. The three
`
`steps of the authentication algorithm are as follows: (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. (Id.) Per Dr. Nettleton, in the May of 2000 time frame, an ordinarily skilled
`
`artisan would have readily been able to write a software program for implementing this
`
`very basic algorithm. (Id., ¶ 14).
`
`Defendants’ expert, Dr. Negus, has acknowledged that in May of 2000 “well-
`
`known software programs” existed for performing this type of authenticating on received
`
`incoming transmissions. (Exh. 10, pp. 222-23). Cf. (Exh. 11, ¶ 161). According to Dr.
`
`Negus, “a transmission including a coded number is a trivial obvious thing,” and it would
`
`have been no “problem for a person of ordinary skill to figure out how” to write a
`
`software program “to compare a field in a transmission with a designated unique
`
`sequence of characters [i.e., with a stored coded number.].” (Exh. 10, p. 223). Indeed,
`
`Dr. Negus has opined that it would be so easy to write such a program that “I don’t think
`
`6 The parties agree that any differences between their respective proposed definitions for
`a person of ordinary skill in the art in these cases would not meaningfully impact the
`legal analysis. See, e.g., (Exh. 9, ¶¶ 14-15).
`
`4830-2155-7269.1
`
`6
`
`10
`
`M2M
`Ex. 2008
`
`

`
`it would take a programmer to do it. I think a person of ordinary skill, whether they’re a
`
`programmer or not, could do it in software.” (Id.)7
`
`D.
`
`Usage Of the Claim Term “Programmable Interface” In The Prior Art To
`Designate A General Class Of Structures
`
`Subsequent to the Court’s Markman ruling, M2M 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. See (Nettleton Decl., ¶¶ 15-25). This class of structures was comprised of
`
`various types of peripheral interfaces including serial, GPIO, and ADC interfaces used
`
`for connecting wireless data modules (such as the claimed “programmable
`
`communicator”) to external monitored technical devices. (Id.) These peripheral
`
`interfaces were expressly referred to and described as “programmable interfaces” because
`
`they could be configured by -- and/or otherwise perform tasks or operations in response
`
`to -- control signals sent by microprocessors. (Id.)
`
`III.
`ARGUMENT
`
`A.
`
`Applicable Legal Standards
`
`1.
`
`Algorithms As Structure For Software-Implemented Claim Terms
`
`For software-implemented claim terms, the relevant supporting structure in the
`
`patent is understood to be an algorithm. Apple Inc. v. Motorola, Inc., 757 F.3d 1286,
`
`1298-99 (Fed. Cir. 2014).
`
`At its core, in the patent law context an algorithm is essentially a description of
`
`the manner in which the recited function for a software-implemented claim term is to be
`
`7 As Defendant Telit has similarly observed, the “‘010 patent discloses a very
`rudimentary one-to-one matching (‘authentication’) method (akin to a password on a
`computer) to determine whether the ‘coded number’ in an incoming transmission
`matches a ‘coded number’ . . . stored on the device.” (C.A. No. 12-033) (D.I. 172 at 1).
`
`4830-2155-7269.1
`
`7
`
`11
`
`M2M
`Ex. 2008
`
`

`
`performed. As the Federal Circuit has explained, an algorithm is an indication of “how
`
`the disclosed function is to be carried out” -- i.e., it is a “disclosure . . . [that] identif[ies]
`
`the method for performing the function” or the “means for achieving that end.” Noah
`
`Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313, 1317 (Fed. Cir. 2012). Indeed, in
`
`Blackboard the court characterized an algorithm as providing at least “some explanation
`
`of how . . . [the claim term] performs the claimed function,” and as offering a description
`
`of a particular “means for achieving that end.” Blackboard, Inc. v. Desire2Learn Inc.,
`
`574 F.3d 1371, 1384-85 (Fed. Cir. 2009). Accord Finisar Corp. v. The DirecTV Group,
`
`Inc., 523 F.3d 1323, 1341-42 (Fed. Cir. 2008) (an algorithm provides “some detail about
`
`the means to accomplish the function”); Function Media, L.L.C. v. Google, Inc., 708 F.3d
`
`1310, 1318 (Fed. Cir. 2013) (an algorithm is an “explanation of how” the claim term
`
`“performs the . . . [recited] function”).
`
`Consistent with this understanding, an algorithm will be deemed absent from a
`
`patent where the manner in which a software-implemented claim term “performs a
`
`recited function . . . is left undisclosed.” Blackboard, 574 F.3d at 1383 (algorithm
`
`missing where patent merely “describes an outcome, [but] not a means for achieving that
`
`outcome.”) For claim terms governed by Section 112(6), that would be tantamount to
`
`impermissible “pure functional claiming.” Id. Indeed, to “allow that form of claiming
`
`under Section 112, paragraph 6, would [unfairly] allow the patentee to claim all possible
`
`means of achieving a function.” Id. at 1385. Accord Noah Systems, 675 F.3d at 1317 (no
`
`algorithm corresponding to a recited function is present where patentee “has attempted to
`
`capture any possible means for achieving that end.”).
`
`The Federal Circuit has adopted a very liberal standard regarding the form that an
`
`algorithm can permissibly take as disclosed in a patent specification: “This court permits
`
`a patentee to express . . . [an] algorithm in any understandable terms including as a
`8
`
`4830-2155-7269.1
`
`12
`
`M2M
`Ex. 2008
`
`

`
`mathematical formula, in prose, or as a flow chart, or in any other manner that provides
`
`sufficient structure.” Finisar, 523 F.3d at 1340 (internal citation omitted). “In turn, the
`
`amount of [algorithmic] detail that must be included in the specification depends on the
`
`subject matter that is described and its role in the invention as a whole, in view of the
`
`existing knowledge in the field of the invention.” Typhoon Touch Technologies, Inc. v.
`
`Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011).
`
`2.
`
`Standards For Determining When Section 112(6) Will Apply To
`Claim Terms Lacking The Words “Means”
`
`As the Federal Circuit recently confirmed en banc in Williamson, for a claim term
`
`lacking the word “means,” a rebuttable presumption arises that the claim term should not
`
`be subject to means-plus-function treatment under Section 112(6). Williamson, 2015
`
`U.S. App. LEXIS 10082, at * 19. However, this “presumption can be overcome if the
`
`challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’
`
`or else recites ‘function without reciting sufficient structure for performing that
`
`function.’” Id. (internal citations omitted).
`
`In determining whether a claim term recites sufficient structure to avoid the
`
`application of Section 112(6), initial focus is placed on the claim term itself. As the
`
`Federal Circuit has explained: “We have not required the claim term to denote a
`
`specific structure. Instead, we have held that it is sufficient if the claim term is used in
`
`common parlance or by persons of skill in the pertinent art to designate structure even if
`
`the term covers a broad class of structures and even if the term identifies the structures
`
`by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
`
`1359-60 (2004).
`
`Moreover, attention next must be paid to the surrounding claim language of the
`
`“entire claim limitation” in which the claim term appears to ascertain whether it
`
`4830-2155-7269.1
`
`9
`
`13
`
`M2M
`Ex. 2008
`
`

`
`“connotes ‘sufficiently definite structure’ to a person of ordinary skill in the art.” Apple,
`
`757 F.3d at 1296. This inquiry requires a court to examine “the specification,
`
`prosecution history, and relevant external evidence to construe the limitation.” Id. When
`
`construed in this manner, if the surrounding language of the full claim limitation provides
`
`a “structural definition” for the disputed claim term, or a “sufficient description of its
`
`operation,”8 then statutorily adequate structure for that claim term has been disclosed. Id.
`
`at 1299-1300. In Apple, for example, the Federal Circuit held that the claim term
`
`“heuristic” failed to invoke Section 112(6) because there was “further description in the
`
`remaining claim language” that explained how its recited function was performed. Id. at
`
`1301.
`
`The analytical approach described above applies with full force “[e]ven if a
`
`patentee elects to use a ‘generic’ claim term, such as a ‘nonce word or a verbal
`
`construct.’” Apple, 757 F.3d at 1299. Indeed, where scrutiny of the entire claim
`
`limitation reveals surrounding claim language that provides a “generic term with a
`
`sufficient description of its operation, the presumption against means-plus-function
`
`claiming remains intact.” Id. at 1300. “By contrast, if the claim merely recites a generic
`
`nonce word and the remaining claim language, specification, prosecution history, and
`
`relevant external evidence provide no further structural description to a person of
`
`ordinary skill in the art, then the presumption against means-plus-function claiming is
`
`rebutted.” Id.
`
`8 As the Federal Circuit has explained, sufficient description of the operation of a claim
`term “is more than just its function; it is how the function is achieved in the context of the
`invention.” Apple, 757 F.3d at 1299. Notably, such operative description need not
`always qualify as an algorithm. To the contrary, “where a claim is not [expressly] drafted
`in means-plus-function format, the reasoning of the Aristocrat line of cases does not
`automatically apply, and an algorithm is therefore not necessarily required.” Id. at 1298.
`
`4830-2155-7269.1
`
`10
`
`14
`
`M2M
`Ex. 2008
`
`

`
`3.
`
`Standards For Determining Whether Adequate Corresponding
`Structure Exists For Supporting Claim Terms That Are Subject to
`Section 112(6)
`
`For claim terms that have been determined to invoke Section 112(6):
`
`“Construction of a means-plus-function limitation includes two steps. ‘First, the court
`
`must determine the claimed function. Second, the court must identify the corresponding
`
`structure in the written description of the patent that performs that function.’” Noah
`
`Systems, 675 F.3d at 1311 (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448
`
`F.3d 1324, 1332 (Fed. Cir. 2006)).
`
`“Corresponding structure” is structure that the intrinsic record “clearly links or
`
`associates . . . [with] the function recited in the claim.” B. Braun Med., Inc. v. Abbot, 124
`
`F.3d 1419, 1424 (Fed. Cir. 1997). As a matter of law, a disclosure of “corresponding
`
`structure” in the patent specification must be “an adequate disclosure showing what is
`
`meant by the . . . [recited function in the claim] language. If an applicant fails to set forth
`
`an adequate disclosure, the applicant has in effect failed to particularly point out and
`
`distinctly claim the invention as required by the [definiteness standards of the] second
`
`paragraph of section 112.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
`
`banc). “The party alleging [indefiniteness on grounds] that the specification fails to
`
`disclose sufficient corresponding structure must make that showing by clear and
`
`convincing evidence.” TecSec, Inc. v. Internat. Business Machines Corp., 731 F.3d 1336,
`
`1349 (Fed. Cir. 2013).
`
`For software-implemented means-plus-function claim terms where the patent
`
`specification is required to recite algorithmic “corresponding structure,” the “sufficiency
`
`of the disclosure of algorithmic structure must be judged in light of what one of ordinary
`
`skill in the art would understand the disclosure to impart.” Aristocrat Techs. Austl. Pty
`
`Ltd. v. International GameTech, 521 F.3d 1328, 1337 (Fed. Cir. 2008). The Federal
`11
`
`4830-2155-7269.1
`
`15
`
`M2M
`Ex. 2008
`
`

`
`Circuit has acknowledged that “[t]his court does not impose a lofty standard in its
`
`indefiniteness cases.” Finisar, 523 F.3d at 1341. Thus, “[i]n software cases . . .
`
`algorithms in the specification need only disclose adequate defining structure to render
`
`the bounds of the claim understandable to one of ordinary skill in the art.” AllVoice
`
`Computing PLC v. Nuance Communications, Inc., 504 F.3d 1236, 1244-46 (Fed. Cir.
`
`2007) (claim terms upheld as definite because specification “does contain sufficient
`
`algorithmic structure to give meaning to the claim terms from the vantage point of an
`
`ordinarily skilled artisan.”). As a practical matter, the courts have held that the
`
`definiteness requirement will necessarily be met where an algorithm “disclose[s]
`
`sufficient structure for a person of ordinary skill in the field to provide an operative
`
`software program for the specified function.” Typhoon, 659 F.3d at 1385. Accord Pi-Net
`
`International Inc. v. JPMorgan Chase & Co., No. 12-282-RGA, 2014 U.S. Dist. Lexis
`
`47569, **19-20 (D. Del. April 7, 2014) (quoting Typhoon for same proposition).
`
`In order to prove by clear and convincing evidence that disclosed algorithmic
`
`structure would be inadequate from the vantage point of an ordinarily skilled artisan, a
`
`party seeking to establish indefiniteness is typically required to rely upon persuasive
`
`expert testimony rather than mere “attorney argument.” Elcommerce.com, Inc. v. SAP
`
`AG, 745 F.3d 490, 505-06 (Fed. Cir. 2014). In Elcommerce.com, for example, the
`
`Federal Circuit reversed a district court’s indefiniteness finding as being “without a
`
`proper evidentiary basis” where a patent challenger had failed to submit expert
`
`testimony.
`
`Id. As the Federal Circuit explained, “in the absence of evidence provided
`
`by technical experts who met the Daubert criteria, there is a failure of proof” on the
`
`indefiniteness issue. Id. See also AllVoice, 504 F.3d at 1245-46 (same).
`
`4830-2155-7269.1
`
`12
`
`16
`
`M2M
`Ex. 2008
`
`

`
`B.
`
`Defendants Fail To Demonstrate That Williamson Requires The “Processing
`Module” Claim Term To Be Governed By Section 112(6) Or Held Indefinite
`Thereunder
`
`As a preliminary matter, Defendants have not met their burden of showing that
`
`the modifying prefix “processing” fails to impart sufficiently definite structure to
`
`“module” so as to place the “processing module” claim term outside the reach of Section
`
`112(6). See Williamson, at * 23. (“Williamson is correct that the presence of modifiers
`
`can change the meaning of ‘module’”). In any event, even placing aside the issue of the
`
`“processing” modifier, M2M demonstrates below that other surrounding claim language
`
`in the “processing module” limitation clearly connotes sufficient structure to remove that
`
`claim term from the potential ambit of Section 112(6).
`
`1.
`
`Section 112(6) Does Not Apply Because Surrounding Claim Language
`In The “Processing Module” Limitation Connotes Sufficient
`Algorithmic Structure
`
`As a matter of law, where the surrounding language in a claim limitation connotes
`
`sufficiently definite structure, a claim term will not be governed by Section 112(6).
`
`Apple, 757 F.3d at 1296. Here, the surrounding claim language expressly explains how
`
`the “processing module” is able to perform its recited function of authenticating a
`
`received incoming transmission -- i.e., “by determining if the at least one transmission
`
`contains the coded number.” When read by a person of ordinary skill in light of the
`
`specification and prosecution history as is required, this language would be understood as
`
`identifying an even more specific manner of authenticating a received incoming
`
`transmission by comparin